Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  July 06, 2021

 

 

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:

 

• Additional Representative Specimens Required

 

Search of USPTO Database of Marks

 

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.

 

Additional Representative Specimens Required

 

Applicant seeks to register its mark for goods that, despite being listed within the same International Classification of goods, are widely varied in nature and purpose.  The specimen images of record do not provide an adequate representation for all varieties of goods.  See TMEP §1402.03 (“The USPTO does not require specimens showing use of the mark for every item set forth in an application.  However, if an identification is broad or so extensive that it encompasses a wide range of products or services, the applicant may be required to submit evidence that it actually uses the mark on a wide range of products or services to obtain registration.”)

 

Therefore as discussed below applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark.  37 C.F.R. § 2.61(b); see also 37 C.F.R. §§2.56, 2.86; TMEP §§814, 901.04, 904.01(a), 1402.03.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

In this application, the variety of goods can be grouped generally as shown below, and where indicated applicant must provide at least one more additional specimen that is representative of the group.  TMEP §1402.03.

 

·         Group A: Light-reflecting coats. [No additional specimens required given acceptable specimens currently of record.]

 

• Group B:  Boaters; Gloves; Spats; Bicycling gloves; Body suits for babies, adults, children, women, men; Boots for motorcycling; Camouflage gloves; Clothing, namely, knee warmers; Cross-country gloves; Cycling caps; Cycling shoes; Cycling shorts; Driving gloves; Leg shielding device, attachable to and detachable from a person's pants, comprised of padding to shield the legs from flying debris when mowing with a string trimmer; Motorcycle gloves; Riding coats; Ski and snowboard shoes and parts thereof.   [At least one specimen required representative of group.]

 

• Group C:  Bridal headpieces as headwear in the nature of veils, fashion hats.  [At least one specimen required representative of group.]

 

·         Group D:  Costumes for use in role-playing games.  [At least one specimen required representative of group.]

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) instruction manuals bearing the mark; (3) an actual container, packaging, tag, or label for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).  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 these requirements by satisfying one of the following for each group of goods as directed above:

 

(1)        Submit for a particular group of goods an additional 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 goods 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 for a particular group of goods 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. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

 

 

/Amit K. Shoor/

Amit K. Shoor

Trademark Examining Attorney

Law Office 117, USPTO

571-272-7126

amit.shoor@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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 July 06, 2021 for

U.S. Trademark Application Serial No. 90473007

 

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. 

 

 

/Amit K. Shoor/

Amit K. Shoor

Trademark Examining Attorney

Law Office 117, USPTO

571-272-7126

amit.shoor@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 July 06, 2021, 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.”