To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Larry Melton (kevin.oliveira@ofplaw.com)
`
`U.S. Trademark Application Serial No. 88414165 - BIKING BRUHZ - 88842.0002
`
`July 23, 2019 09:19:25 PM
`
`ecom104@uspto.gov
`
`Attachments:
`
`Attachment - 1
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial
`No. 88414165
`
`Mark:   BIKING BRUHZ
`
`Correspondence
`Address: 
`Kevin Oliveira
`Odin, Feldman &
`Pittleman PC
`1775 Wiehle Avenue,
`Suite 400
`Reston VA 20190-5159
`
`     
`    
`   
`
`Applicant:   Larry Melton
`
`    
`
`Reference/Docket No.
`88842.0002
`
`Correspondence Email
`
`Address:  
`
`kevin.oliveira@ofplaw.com
`
`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
`
`NONFINAL OFFICE ACTION
`
`end of this Office action.   
`
`Issue date:  July 23, 2019
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`SEARCH OF OFFICE’S DATABASE OF MARKS
`
`The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
`Although no conflicting marks that would bar registration under Trademark Act Section 2(d) have been found, applicant must respond to the
`refusal and requirements set forth below.
`
`SUMMARY OF ISSUES:
`
`Specimen Refusal – Specimen Omitted
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`Identification of Goods Requirement
`Disclaimer Requirement
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`SPECIMEN REFUSAL – SPECIMEN OMITTED
`
`Registration is refused because the application does not include the required specimen showing the applied-for mark in use in commerce in
`International Class 25.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a),
`1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce
`for each international class of goods and/or services identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a);
`
`TMEP §§904, 904.07(a).  
`
`Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
`packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  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.  TMEP
`
`§904.03(i).  
`
`Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
`
`(1)      
`
`Submit a verified specimen that (a) was in actual use in commerce at least as early as the filing date of the application and (b)
`shows the mark in actual use in commerce for the goods and/or services identified in the application.  A “verified 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.”   The specimen cannot be accepted without this statement.
`
`(2)      
`
`Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate
`additional fee(s) and filing requirements such as providing a specimen.
`
`For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic
`Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/specimen.jsp.
`
`IDENTIFICATION OF GOODS REQUIREMENT
`
`The identification of goods is indefinite and must be clarified because applicant did not identify “speedsuits” and “base layer” with sufficient
`specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the field of use in which the goods are used or intended to be
`
`used, or the specific purpose of the goods.  See TMEP §1402.01.  
`Applicant may adopt the following wording, if accurate:  
`
`Class 25: Clothing for use in cycling, namely, body suits, speedsuits IN THE NATURE OF BODY SUIT, base layers IN THE NATURE OF
`UNDERWEAR, jackets, shirts, jerseys, shorts, bib shorts, vests, pants, knee warmers, arm warmers, leg warmers, socks, and gloves; clothing for
`athletic use, namely, t-shirts, sweaters, and hoodies; athletic footwear, namely, footwear for use in cycling; headwear, namely, hats, caps, and
`beanies
`
`An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R.
`§2.71(a); see TMEP §§1402.06 et seq., 1402.07.
`
`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.
`
`DISCLAIMER REQUIREMENT
`
`Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be
`registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s
`appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
`
`In this case, applicant must disclaim the wording “BIKING” because it is not inherently distinctive.   These unregistrable term(s) at best are
`merely descriptive of a characteristic, purpose, or use of applicant’s goods.   See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro
`Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 
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`The attached evidence from https://www.vocabulary.com/dictionary/bike?family=biking shows this wording transporting oneself on a wheeled
`vehicle that has two wheels and is moved by foot pedals and the synonymous with “cycling.” Given that applicant’s identified goods include
`clothing for use in cycling, the wording merely describes a characteristic, purpose, or use of applicant’s goods.
`
`Applicant may respond to this issue by submitting a disclaimer in the following format:  
`No claim is made to the exclusive right to use “BIKING” apart from the mark as shown.   
`
`For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the
`
`Disclaimer webpage.  
`
`ASSISTANCE
`
`For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant
`may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement,
`applicant should set forth the changes or statements.  Please see “ Responding to Office Actions” and the informational video “Response to
`Office Action” for more information and tips on responding.
`
`Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining
`attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with
`additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does
`not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. 
`
`See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  
`
`To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic
`Application System (TEAS), which is available at http://www.uspto.gov/trademarks/teas/index.jsp.  If applicant has technical questions about the
`TEAS response to Office action form, applicant can review the electronic filing tips available online at
`http://www.uspto.gov/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
`per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS
`Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring
`
`this additional fee.    
`How to respond.   Click to file a response to this nonfinal Office action    
`
`/Donald Johnson/
`Examining Attorney
`Law Office 104
`571-272-7831
`don.johnson@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
`
` 
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`

`

`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.
`
` 
` 
`

`

`?:10:12 PM 7932019
`
`httpsjlwwvocabulazy.comldictlonaryfbike‘r‘tamilyzbikmg
`
`Bluetoothg’ Integrated
`Fload Cycling Helmet
`
`I> x
`
`SENA
`Illa! 'II'I'M MEI' If I'.
`
`
`
`. ocobulorgcom
`
`Vocabularycom Dictionary
`
`Advanced Search
`
`List Bwlder Random Word
`
`bike
`
`A bike is a pedal-powered two-wheeled
`
`vehicle. If you don't have time to walk to
`
`work, you might decide to ride your bike
`
`instead.
`
`Bike is shorthand for a bicycle or a motorbike. A bike enthusiast might
`
`keep a bike rack on her car and a bike helmet in her trunk at all times.
`
`Bike is also a verb, so you could say: "I‘ll bike over to the movie theater
`
`— meet you there in fifieen minutes?" This word= as a nickname for
`
`bicycle. first appeared in American English in 1882. It came to mean
`
`"motorcycle" about 50 years later.
`
`Definitions of
`
`bike
`
`1.
`
`
`a wheeled vehicle that has two wheels and is moved by
`foot pedals
`
`Synonyms :
`
`bicycle, cycle. wheel
`
`Types:
`
`Show 6 95295...
`
`Add to List...
`
`Thesaurus
`
`Share It
`
`
`
`Word Family
`
`Usage Examples
`
`El Ail Source:
`
`| WE |
`
`| ”$55 l -
`
`l the "bike" family i
`
`Type of:
`
`wheeled vehicle
`a vehicle that moves on wheels and usually has a container for
`transporting things or people
`
`
`a a motor vehicle with two Wheels and a strong frame
`
`Consider walking= jogging. gardening, housecleaning, biking. swimming.
`weightlifinig or anything else that gets you active.
`
`Here are four 15.5. destinations renowned for their hiking. biking: dining and
`bounty ofmountain charm.
`
`Sjmonyms:
`
`motorcycle
`
`Investigators think he was biking to a nearby market when he was shot.
`
`Types:
`
`minibike= motorbike
`small motorcycle with a low frame and small wheels and
`
`

`

`'
`elevated handlebars
`
`din bike, scramblerl trail bike
`a lightweight moiolcycle equipped with rugged tires and
`suspension; an offeroad motomvcle designed for riding cross
`country or over unpaved ground
`
`mo ed
`
`a motorbike that can be pedaled or driven by a low-powered
`gasoline engine
`
`Type of:
`
`automotive vehicle: motor vehicle
`a self-propelled wheeled vehicle that does not run on rails
`
`
`ride a bicycle
`
`Synonyms:
`
`Types:
`
`
`bicycle: cvcle. pedal, wheel
`
`uniovcle
`ride a unicycle
`backpedai
`pedal backwards on a bicycle
`
`Type of:
`
`ride
`be owned or travel on or in a vehicle
`
`ncuuulng ItlldllL'L‘ UII dUlUIIlUUHCS U) using pLIUIlL: llELUSpUI ldllUIl i111“ \\ muig
`
`or biking to work increases physical activity with the attendant health benefits
`including lower rates of obesmy.
`
`Next 3
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`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Larry Melton (kevin.oliveira@ofplaw.com)
`
`U.S. Trademark Application Serial No. 88414165 - BIKING BRUHZ - 88842.0002
`
`July 23, 2019 09:19:26 PM
`
`ecom104@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on July 23, 2019 for
`U.S. Trademark Application Serial No. 88414165
`
`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.   
`
`Johnson, Don
`/Donald Johnson/
`Examining Attorney
`Law Office 104
`571-272-7831
`don.johnson@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 23, 2019, 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.”
`
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