Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

 

Issue date:  May 18, 2020

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On May 18, 2020, the examining attorney and Julie A. Greenberg discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Identification and Classification of Goods/Services

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Amendment to Identification of Goods and/or Services Required

 

Applicant must clarify the following indicated language for reasons stated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 35 for “jewelry, rings”, “apparel, namely, jackets, athletic wear, namely, pullovers, hoodies, t-shirts, long sleeve shirts, hats, headwear, jerseys, shorts, track pants, tights, athletic wear, compression wear, jackets, vintage apparel, athletic uniforms, socks, ring boxes, posters, trophies, glass wear, plaques, medallions, commemorative paper goods, wall graphics, duffle bags, blankets, towels, banners”, “posters”, “trophies”, “glass wear”, “plaques”, “medallions”, “commemorative paper goods”, “wall graphics”, “duffle bags”, “blankets”, “towels”, “banners”, “recognition rings”, “team rings”, “sports rings”, “jewelry”, “rings”, “ring boxes”, “jewelry”, and “rings”.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “jewelry, rings” is misclassified and is properly classified in class 14.

 

The wording, “apparel, namely, jackets, athletic wear, namely, pullovers, hoodies, t-shirts, long sleeve shirts, hats, headwear, jerseys, shorts, track pants, tights, athletic wear, compression wear, jackets, vintage apparel, athletic uniforms, socks, ring boxes, posters, trophies, glass wear, plaques, medallions, commemorative paper goods, wall graphics, duffle bags, blankets, towels, banners” is indefinite and overly broad and must be clarified because the identification could indicate goods in multiple classes.

 

The wording, “recognition rings, team rings, sports rings” is indefinite and overly broad and must be clarified because the nature of the goods is unclear and could identify goods in multiple classes.

 

The wording, “custom design and manufacture of recognition rings, team rings, championship rings, sports rings, customized pendants, dog tags, jewelry, rings” is indefinite and overly broad and must be clarified because the nature of the services is unclear and could identify services in multiple classes as indicated below.

 

The wording, “clothing, namely, pullovers, hoodies, t-shirts, long sleeve shirts, hats, headwear, jerseys, shorts, track pants, tights, athletic wear, compression wear, jackets, vintage apparel, athletic uniforms, socks” is indefinite, overly broad and misclassified and must be clarified because it could identify goods in multiple classes.

 

The wording, “ring boxes” is indefinite and must be clarified because the nature of the goods is unclear.

The wording, “championship rings” is misclassified and is properly classified in class 14.

 

The wording, “team jewelry” is misclassified and is properly classified in class 14.

 

The wording, “customized pendants” is misclassified and is properly classified in class 14.

 

The wording, “customized merchandise” is indefinite and overly broad and must be clarified because it is unclear whether applicant is offering customizing services or goods and if goods what specific good the merchandise is.

 

Applicant may substitute the following wording, if accurate:

 

Class 6:

 

Trophies of common metal for use as awards; 

 

Class 10:

 

Medical compression stockings and tights 

 

Class 14:

 

Jewelry; rings; recognition rings, team rings, sports rings all being jewelry

 

Class 16:

 

Posters

 

Class 18:

 

duffle bags

 

Class 25:

 

apparel, namely, jackets, athletic wear, namely, pullovers, hoodies, t-shirts, long sleeve shirts, hats, headwear, jerseys, shorts, track pants, tights;

 

Class 28:

 

yoga blankets

 

Class 35:

 

retail, wholesale and online retail store services featuring recognition rings, team rings, championship rings, team jewelry, sports rings, customized pendants, dog tags, jewelry, rings, ring boxes, customized merchandise;  providing an on-line showroom for the goods of others in the field of recognition rings, team rings, championship rings, sports rings, customized pendants, dog tags, jewelry, rings 

 

Class 40:

 

Custom manufacture of recognition rings, team rings, championship rings, sports rings, customized pendants, dog tags, jewelry, rings

 

Class 42:

 

custom design of recognition rings, team rings, championship rings, sports rings, customized pendants, dog tags, jewelry, rings

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Multi-Class Application Requirements

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 10 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for class(es) 35, 40,  and 14; and applicant needs a specimen for any other class added.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.

 

 

/Caitlin Watts-Fitzgerald/

Caitlin Watts-FitzGerald

Examining Attorney

Law Office 111

571-272-9015

Caitlin.Watts-Fitzgerald@USPTO.GOV

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 18, 2020 for

U.S. Trademark Application Serial No. 88812670

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Caitlin Watts-Fitzgerald/

Caitlin Watts-FitzGerald

Examining Attorney

Law Office 111

571-272-9015

Caitlin.Watts-Fitzgerald@USPTO.GOV

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 18, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”