UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/004391
APPLICANT: U. S. BANK NATIONAL ASSOCIATION
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: XTREEM
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/004391
On September 15, 2000, action on this application was suspended pending the disposition of Application Serial Nos. 75594711 and 75768690. The referenced pending applications have since abandoned. Therefore, the potential refusals are withdrawn.
While the current application was suspended, applicant has filed an assignment of the entire interest to U. S. BANK NATIONAL ASSOCIATION, but has not filed a change of attorney nor a change of correspondence address. In order for the application to proceed to publication the new applicant must respond to the following.
Applicant must specify its entity type and citizenship. For example, an applicant can apply as an individual, a partnership, a corporation or a joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§802.03 et seq. If applicant is an individual, then applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i). If applicant is a corporation or association, then applicant must set forth the U.S. state or country (for foreign applicants only) under whose laws applicant is organized. 37 C.F.R. §2.32(a)(3)(ii). If applicant is a partnership or joint venture, then applicant must list the names and the national citizenship or the U.S. state or country (for foreign applicants only) of organization or incorporation of all the general partners or joint venturers, as well as specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §§2.32(a)(3)(ii) and (iii).
An applicant cannot assign an application that was filed under 15 U.S.C. §1051(b) before the applicant files an amendment to allege use under 15 U.S.C. §1051(c) of the Act or a statement of use under 15 U.S.C. §1051(d) of the Act, except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. §1060; 37 C.F.R. §3.16. TMEP §501.01(a).
While the assignment in this case states it is an assignment of the entire interest, the assignment record fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains. The applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to resolve the issue. This statement may be entered through an examiner’s amendment.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/M. Catherine Faint/
Examining Attorney
Law Office 103
phone: 571-272-9274
fax: 571-273-9103
email: Catherine.Faint@uspto.gov
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.