To: | Criss Beyers (jhiggins@kkclegal.com) |
Subject: | U.S. Trademark Application Serial No. 90346385 - ELITE - N/A |
Sent: | October 12, 2021 03:32:59 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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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: October 12, 2021
This Office Action is in reply to the applicant’s communication of September 17, 2021. The applicant’s amended identification is not acceptable, in part, and the requirement for an acceptable identification is maintained and continued. The applicant’s substitute specimen is acceptable and has been made of record, and the requirement is satisfied. The applicant’s claim of ownership of its prior registration is acceptable and has been made of record, and the requirement is satisfied. The applicant has raised a new issue regarding its drawing page which is addressed below.
Summary of the Issues
1. Identification of the Services;
2. Color Claim and Color Location.
Identification of the Services
In this case, the application originally identified the services as follows: “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.
However, the proposed amendment identifies the following goods: “Basketball apparel and other clothing, namely, basketball shorts, basketball jerseys, golf shirts, hats, polo shirts, quarter zips, pullovers, sweatshirts, and t-shirts” in International Class 25.
This proposed amendment is beyond the scope of the original identification because the original identification makes no claim to any type of clothing items, and thus, these goods cannot be added to the identification. As such, the applicant’s amendment for clothing items has been deleted from the identification.
Regarding the identification of the services in International Classes 35 and 41, the applicant applied for the mark ELITE 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 applicant’s amended identification of the services in International Class 35 is acceptable as submitted. However, the applicant has simply ignored the requirements for an acceptable identification in International Class 41.
Specifically, 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; (acceptable as amended).
“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.
Color Claim and Color Location Statement
In its response, the applicant provided the statement “Disclaiming colors as features of the mark.” The applicant may not simply “disclaim” the color of the marks.
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any othsr amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: The mark consists of the scripted word "Elite" with the dot above the letter "i" consisting of an outline of the geographic depiction of the State of Indiana.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors green and white are claimed as a feature of the mark.”
Description: “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 interior of the depiction of the State of Indiana is in white.
See TMEP §807.07(b).
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