To: | Criss Beyers (jhiggins@kkclegal.com) |
Subject: | U.S. Trademark Application Serial No. 90346385 - ELITE - N/A |
Sent: | May 13, 2021 09:25:37 PM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90346385
Mark: ELITE
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Correspondence Address: |
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Applicant: Criss Beyers
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Reference/Docket No. N/A
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/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 13, 2021
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 13, 2021, the examining attorney and John P. Higgins 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.
1. Specimen Refusal;
2. Identification and Classification of the Services;
3. Multiclass Advisory;
4. Claim of Prior Registration.
Specimen Refusal
The applicant has applied for the mark ELITE (and design), for “Amateur youth sports services, namely, organizing, recruiting, evaluating, scouting, promoting, and coaching basketball players and organizing basketball events, competitions, and training camps.”
The specimen consists of an advertising flyer that contains the mark and information about tryouts for grades 7 and 9. However, the flyer contains no information about the subject matter of the tryouts, nor any information about organizing, recruiting, evaluating, scouting, promoting, and coaching basketball players and organizing basketball events, competitions, and training camps. Therefore, registration must be refused because the specimen does not show the applied-for mark as actually used in commerce with the identified services.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Identification and Classification of the Services
The applicant has applied for the mark ELITE (and design) for “Amateur youth sports services, namely, organizing, recruiting, evaluating, scouting, promoting, and coaching basketball players and organizing basketball events, competitions, and training camps” in International Class 41.
The wording “recruiting” and “promoting” in identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, sports recruiting services in the field of high school basketball players is a service that is properly classified in International Class 35. Likewise, promotional services are properly classified in International Class 35. For example, “Promoting amateur youth basketball competitions and basketball training camps; sports recruiting services in the field of high school basketball players” would be properly classified in International Class 35
Additionally, in International Class 41, the applicant must provide the common commercial name of its organized basketball events. For example, “Amateur youth sports services, namely, scouting, and coaching basketball players and organizing basketball events, namely, basketball competitions, and basketball training camps” would be acceptable in International Class 41.
Applicant may substitute the following wording, if accurate:
“Promoting amateur youth basketball competitions and basketball training camps; sports recruiting services in the field of high school basketball players” in International Class 35;
“Amateur youth sports services, namely, scouting, and coaching basketball players and organizing basketball events, namely, basketball competitions, and basketball training camps” in International Class 41.
TMEP §§1402.01 and 1402.03.
The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules. When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification. However, it is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d).
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.
Multiclass Advisory
(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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 not acceptable for classes 35 and 41. (See above for Specimen Refusal). See more information about specimens.
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
Claim of Prior Registration
Applicant’s claim of ownership of U.S. Registration No. 8527208 will not be printed on any registration which may issue from this application because Office records show that the claimed registration does not exist. Only claims of ownership of active registrations that exist are printed. See 37 C.F.R. §2.36; TMEP §812. It appears the applicant meant to claim Registration Number 4090065, which has serial number of 85272081. If so, the applicant may claim ownership of Registration Number 4090065 (do not submit an ownership claim using the serial number).
Applicant may claim the prior registration by submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 4090065.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
Disclaimer
The following disclaimer statement is added to the record:
No claim is made to the exclusive right to use the pictorial representation of the State of Indiana apart from the mark as shown.
See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(c), 1213.08(a)(i).
Description of the Mark
The following description of the mark is added to the record:
The mark consists of the green scripted word "Elite" with the dot above the letter "i" consisting of an outline of the geographic depiction of the State of Indiana in green. The entire mark is on a transparent background that is not claimed as a feature of the mark.
See 37 C.F.R. §2.37; TMEP §§808 et seq.
How to respond. Click to file a response to this nonfinal Office action.
If the applicant has any questions, please contact the undersigned.
/Ty Murray/
Ty Murray
Attorney Advisor
United States Patent and Trademark Office
Law Office 113
(571) 272-9438
ty.murray@uspto.gov
RESPONSE GUIDANCE