SERIAL NO:           77/721974


    MARK: DEMSHITZ          






          PHILIP J. FORET         

          DILWORTH PAXSON LLP     

          1500 MARKET ST STE 3500E

          PHILADELPHIA, PA 19102-2101         










    APPLICANT:           Demshitz LLC           

















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.




The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.


REGISTRATION REFUSED – Scandalous and Immoral


Registration is refused because the applied-for mark consists of or comprises immoral or scandalous matter.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.01.  According to the attached evidence, the applied-for mark includes the wording “SHITZ”  and is thus scandalous because the mark includes profanity.


To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation,” in the context of the marketplace as applied to goods and/or services described in the application.  In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994) (quoting In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938); In re Wilcher Corp., 40 USPQ2d 1929, 1930 (TTAB 1996); see TMEP §1203.01.  Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, . . . and in the context of contemporary attitudes.”  In re Mavety Media Group Ltd., 33 F.3d at 1371, 31 USPQ2d at 1925; see TMEP §1203.01.


The fact that profane words may be uttered more freely in contemporary American society than in the past does not render such words any less profane.  In re Tinseltown, Inc., 212 USPQ 863, 866 (TTAB 1981) (finding the wording BULLSHIT scandalous for handbags and other personal accessories); cf. In re Red Bull GmbH, 78 USPQ2d 1375, 1380-82 (TTAB 2006).  Here, the “SHITZ” wording is profane.


Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.


Applicant must respond to the requirement(s) set forth below.




Many of the goods and services are classified incorrectly.  Applicant must amend the application to classify them in the appropriate International Class.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).




The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(c).


The wording in the identification of services is indefinite and must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03.  The wording “clothing” in the identification of goods must be clarified because it is too broad and could include goods in several international classes.  See TMEP §§1402.01, 1402.03.  Examples of acceptable identifications include the following:  “protective clothing” in International Class 9, “surgical gowns” in International Class 10, “pet clothing” in International Class 18, and “shirts, shorts and pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing. 


If applicant’s clothing is classified in International Class 25, applicant should insert the word “namely,” after “clothing” and indicate the common commercial or generic names for the goods (e.g., shirts, pants, coats, dresses).  Moreover, the applicant must describe the precise nature of the services.


Applicant may substitute the following wording, if accurate:


Class 9

Prerecorded DVD’s featuring comedy and drama movies;


Class 16

Decals; stickers; printed publications, namely, magazines in the field of {applicant must specify}


Class 25

Clothing, namely, shirts, hats, sweat shirts, t-shirts, and hooded sweatshirts;


Class 41

Educational, entertainment and training services, namely, sports training services in the field of water, gravity and extreme sports, whitewater sports, downhill sports, and bicycling; providing a website featuring sports information about water and gravity sports, extreme sports, whitewater sports, downhill sports and bicycling; providing an online journal, namely, blogs featuring water and gravity sports, extreme sports, whitewater sports, downhill sports and bicycling;


Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the 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 services that are not within the scope of the services set forth in the present identification.


Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 


Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.


For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.




If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):


(1)        Applicant must list the goods and/or services by international class; and


(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).


See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).




If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.




Ingrid Eulin

Law Office 111

(571) 272-9380



RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.


If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.


STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.