Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/191233

 

This letter responds to the applicant's communication filed  October 17, 2002.  The Office has reassigned this application to the undersigned examining attorney.  The finality of the prior refusal is withdrawn due an issue not previously raised.  The surname refusal is continued because the claim of distinctiveness is incomplete.  

 

Identification

The wording “components thereof” in the identification of goods is unacceptable as indefinite because it is too broad.  The applicant may amend this wording to “structural parts therefor,” if accurate, or list the component parts by their common commercial names.  TMEP §1402.01.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)    The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

Acquired Distinctiveness Evidence Insufficient

The evidence submitted by the applicant was not probative enough to establish that the wording in the mark had acquired distinctiveness.   Since this is an intent to use application, the applicant may make a claim of acquired distinctiveness based on use of the mark on related goods or services. See TMEP1212.09(a).  Here the information submitted shows articles related to the actual goods not related goods.  Further, it appears that the articles refer to the use of the proposed mark in Germany not here in the relevant market.  If the applicant believes that the mark has acquired distinctiveness, that is, that it has become a distinctive indicator of source for related goods which now transfers to the present goods, the applicant must provide evidence such as:  (1) ownership of a prior registration for the same mark for related goods or services (see TMEP §1212.04 et seq.); (2) a prima facie showing of acquired distinctiveness based on five years' of substantially exclusive and continuous use of the same mark with related goods or services (see TMEP §1212.05 et seq.); or (3) actual evidence of acquired distinctiveness for the same mark with respect to the other goods or services (see TMEP §1212.06 et seq.).     

 

Amendment to the Supplemental Register

In the alternative, please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), may be eligible for registration on the Supplemental Register once an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 708.01.

 

 

 

Response Guidelines

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).

 

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

 

 

 

/ Hellen M. Bryan-Johnson /

Trademark Examining Attorney

Law Office 114

(703) 308-9114 ext 157

e-mail  www.ecom114@uspto.gov

fax (703) 746-8114

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.