To: | Sire Spirits LLC (gashenmacher@robinskaplan.com) |
Subject: | U.S. Trademark Application Serial No. 90521353 - BRANSON - 110284.0002 |
Sent: | September 07, 2021 11:15:46 AM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90521353
Mark: BRANSON
|
|
Correspondence Address:
|
|
Applicant: Sire Spirits LLC
|
|
Reference/Docket No. 110284.0002
Correspondence Email Address: |
|
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: September 07, 2021
SEARCH OF USPTO DATABASE OF MARKS
SUMMARY OF ISSUES
· Prior-filed application – advisory
· Identification and classification of goods
· Multiple-class application – advisory
PRIOR-FILED APPLICATION(S)
The filing dates of pending U.S. Application Serial Nos. 88384299 and 88171049 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION AND CLASSIFICATION OF GOODS
THIS PARTIAL REQUIREMENT APPLIES TO CLASSES 21 AND 34 ONLY
The applicant has applied to register its mark in connection with the following:
Class 21: Non-electric portable coolers, coolers for wine, and drinking flasks
Class 25: Clothing, namely, t-shirts, sweatshirts, shorts, and hats
Class 34: Lighters
Specific Issues with Current Wording in Identification
Regarding Class 21, applicant uses commas to separate distinct unrelated goods. 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.
Thus, applicant should replace the commas with semi-colons in the identification of goods.
Regarding Class 34, applicant’s “lighters” are overly broad and could include lighters in additional classes depending on the purpose or functionality of the said lighters. See the suggested Identification amendments below for examples.
Examiner’s Suggested Identification Amendments
Applicant may adopt the following identification amendment suggestions, if accurate:
CLASS 11 – Friction lighters for igniting gas
CLASS 12 – Cigarette lighters for automobiles
CLASS 21 – Non-electric portable coolers; coolers for wine; drinking flasks
CLASS 25 – Clothing, namely, t-shirts, sweatshirts, shorts, and hats
CLASS 34 – Lighters for smokers
Scope Advisory
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.
MULTIPLE-CLASS APPLICATION - ADVISORY
The application references goods 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 five (5) classes; however, applicant submitted a fee(s) sufficient for only three (3) classes. 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 classes 21, 25, and 34; and applicant needs a specimen for classes 11 and 12. 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.
(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.
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
Annie Noble
/Annie M. Noble/
Trademark Examining Attorney
Law Office 109
(571) 272-3272
annie.noble@uspto.gov
RESPONSE GUIDANCE