To: | Michalski, Craig (goosesffs@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90086970 - SANCTIFIED SOULS RIDING CLUB - N/A |
Sent: | March 25, 2021 12:54:07 PM |
Sent As: | ecom118@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90086970
Mark: SANCTIFIED SOULS RIDING CLUB
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Correspondence Address:
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Applicant: Michalski, Craig
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 25, 2021
This Final Office action is in response to applicant’s communication filed on 12/21/2020 in which applicant addressed the following issues:
1. Requirement for an Acceptable Identification of Services
2. Requirement for a Disclaimer
The trademark examining attorney issued an Office action on November 19, 2020, which identified certain refusals and/or requirements regarding the application. On December 21, 2020, the USPTO received applicant’s response; however, the response contained no text or data but was merely a blank submission bearing applicant’s signature. In other words, the response did not address any of the refusals and/or requirements in the Office action.
A response whose entire contents comprise an applicant’s signature is not sufficient to show an applicant’s agreement with the issues raised in an Office action. To be considered a complete response, such response must explicitly address each refusal and/or requirement raised and be properly signed. TMEP §§715.03(a)(ii)(E), 718.03; see 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(b), 2.65(a).
Therefore, because applicant submitted a blank response, all the previously raised refusals and/or requirements are now made FINAL. 37 C.F.R. §2.63(b); TMEP §714.03.
E-MAIL ENCOURAGED TO RESOLVE ALL ISSUES
Please email the assigned trademark examining attorney at Tasneem.hussain@uspto.gov to resolve the issues in this Office Action.
IDENTIFICATION AND CLASSIFICATION OF SERVICES
Organizing chapters of a {indicate specific group, e.g., motorcycle, sky diving, book reading, etc.} club and promoting the interests of the members thereof
However, applicant inserted wording that goes beyond merely specifying the group and is confusing. Applicant may adopt the following identification, if accurate:
“Organizing chapters of a motorcycle riding club that helps the community with fundraisers and riding events for members who ride motorcycles as a hobby and promoting the interests of the members thereof” in International Class 035
DESCRIPTION ADVISORY: Identifications of services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed). See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. For guidance on drafting acceptable identifications of services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.
This issue is now made final.
The previously attached evidence from American Heritage® Dictionary of the English Language shows RIDING means “The act or an instance of riding, as in a vehicle” while CLUB means “A group of people organized for a common purpose”. The wording appears in the identification of services itself. Thus, the wording merely describes applicant’s services as involving a club for motorcycle riders.
In other words, applicant’s mark will remain “SANCTIFIED SOULS RIDING CLUB” with the statement in the Office records that applicant does not claim to have sole rights in the descriptive wording. If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “RIDING CLUB” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
This issue is now made final.
Proper Response to Final Office Action – Full Refusal(s)/Requirement(s)
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
Please contact 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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Ms. Tasneem Hussain/
Trademark Examining Attorney
Law Office 118
tasneem.hussain@uspto.gov (preferred)
571.272.8273
RESPONSE GUIDANCE