UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 12/22/2010

 

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, 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

PRIOR PENDING APPLICATION

 

The filing date of pending Application Serial No. 77709387 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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 mark in the referenced application.  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.

 

INFORMALITY

 

IDENTIFICATION OF GOODS

 

The wording “nonmedicated lubricating ointments and gels for reducing skin friction in sports activities and running” in the identification of goods is properly classified in International Class 005.  See TMEP §§1402.01, 1402.03. 

 

Applicant should note that the wording in bold italics below shows the changes being proposed for the identification of goods/services.  When making its amendments, applicant should enter them in standard font, not bold italics.

 

Applicant may substitute the following wording, if accurate: 

 

“Tape and taping supplies for medical purposes, namely, medical adhesive tape, medical cohesive tape, medical pretaping foam underwrap, medical pretaping spray adherent; first aid kits; athletic trainers' kits comprised primarily of adhesive bandages, medical adhesive tape, gauze pads for dressings, medical cohesive tape, antibiotic ointments, antiseptic spray, spray-on bandages and ice bags for medical purposes; analgesic ointments and balms; medical and surgical dressings, namely, blister pads, wound dressings; nonmedicated topical gels and ointments for use as personal lubricants on skin; all purpose disinfectants and antibacterial cleaners for surfaces; spray on bandages for skin wounds; antiseptic sprays and ointments for medical use; adhesive bandages; nonmedicated lubricating ointments and gels for reducing skin friction in sports activities and running” in International Class 005;

 

“Cohesive support bandages, cohesive compression bandages; cold and hot therapy products for medical purposes, namely, ice bags, chemically activated cold therapy packs, chemically activated instant cold therapy packs, cold and hot thermal packs for first aid purposes, spray coolant for skin for medical purposes, medical therapeutic cold and hot compression wraps; elastic bandages, elastic support bandages for medical purposes; medical and orthopedic products, namely, orthopedic braces, medical ankle braces, medical ankle supports, orthopedic supports in the nature of ankle stabilizers, medical knee braces, medical knee supports, orthopedic supports in the nature of knee stabilizers, orthopedic supports in the nature of knee sleeves, orthopedic supports in the nature of knee straps, orthopedic supports in the nature of elbow sleeves, medical elbow supports, medical wrist braces, medical wrist supports, orthopedic supports in the nature of wrist stabilizers, orthopedic supports in the nature of wrist sleeves, medical compression gloves, medical back braces, medical back supports, orthopedic supports in the nature of back stabilizers, orthopedic supports in the nature of thumb stabilizers, medical shoulder braces, orthopedic supports in the nature of thigh sleeves, medical thigh supports, medical calf and shin supports, arm slings” in International Class 010;

 

“Tape and taping supplies for athletic purposes, namely, athletic adhesive tape, athletic cohesive tape and bandages, athletic pretaping foam underwrap, athletic pretaping spray adherent; athletic sporting goods, namely, adhesive glare reducing under eye strips, under-eye black paste for reducing sun glare for sports activities; athletic sporting goods, namely, athletic wrist and joint supports, protective athletic ankle braces, protective athletic ankle supports, protective athletic ankle stabilizers, protective athletic knee braces, protective athletic knee supports, protective athletic knee stabilizers, protective knee pads for athletic use, knee compression sleeves for use in soccer and other sports, protective athletic knee straps, elbow compression sleeves for use in soccer and other sports, protective athletic elbow supports, protective elbow pads for athletic use, protective athletic wrist braces, protective athletic wrist supports, protective athletic wrist stabilizers, wrist compression sleeves for use in soccer and other sports, protective athletic back braces, protective athletic back supports, protective athletic back stabilizers, protective athletic thumb stabilizers, shoulder braces, thigh compression sleeves for use in soccer and other sports, protective athletic thigh supports, protective athletic calf and shin supports, arm slings; compression gloves for athletic use; mouth guards for athletic use; nose guards for athletic use; athletic supporters, jock straps, protective athletic cups, athletic support briefs; protective collars for fastening to football shoulder pads; grip enhancers for use in athletic activities, namely, chalk, crushed and powdered rosin used by athletes, water repelling spray for hands, adhesive powder for hands, aerosol adhesive non-slip resin spray for hands for use by athletes, and pine tar for athletic equipment” in International Class 028. 

 

Request for Information

 

If the suggested amendment to the identification of goods is not acceptable, then applicant must respond to the following request for information:

 

The nature of the goods on which applicant intends to use its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

 

Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods.  If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods.

 

Failure to respond to a request for information can be grounds for refusing registration.  TMEP §814; see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Scope

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

ID Manual Online

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

 

/Jay C. Besch/

Trademark Examining Attorney

Law Office 108

United States Patent and Trademark Office

(571)272-8606

jay.besch@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.