Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 

Serial Number  76/250827

 

 

CONTINUED SUSPENSION

 

 

This letter responds to the applicant's communication filed on April 23, 2003.

 

Suspension Pending Receipt of Foreign Registration

 

Pending receipt of the certification or certified copy of the registration in the country of origin of the applicant, action on this application is suspended.

 

The applicant should submit, as soon as possible, the certification or certified copy of the foreign registration and, if the certificate is not in the English language, an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b).  It is customary for the translator to sign the translation.  Semi‑annual inquiry may be made as to the status of the foreign application.

 

The examining attorney notes that the applicant intends to maintain the dual basis under Section 44(d) and Section 1(b).

 

Suspension Pending Disposition of Prior Applications

 

In the prior office action, the examining attorney noted that pending Application Serial Nos. 75/171991 and 75/232145 have filing dates preceding the applicant's filing date and that there may be a likelihood of confusion between the marks under Section 2(d) of the Trademark Act.  The referenced applications have not yet matured into registrations nor become abandoned; accordingly, pending the disposition of Application Serial Nos. 75/171991 and 75/232145, action on this application is suspended.

 

Refusal Under Section 2(d) Withdrawn

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) with regard to the mark shown in U.S. Registration No. 0931035.  As the applicant has indicated, this registration has been cancelled.  Accordingly, the refusal under Section 2(d) is hereby withdrawn.

 

Identification and Classification of Goods – Requirement Continued

 

The identification of goods is unacceptable as indefinite.  Additionally, some of the wording is beyond the scope of the identification as filed.  Moreover, the applicant has misclassified some of the goods.  Accordingly, the applicant must amend the wording of the identification and the classification of goods as indicated.  TMEP sections 1402.01, 1401.02(a) and 1401.03(b).

 

Class 20

 

Furniture – This wording identifies goods beyond the scope of the identification in the application.  That is, the application identified specific types of furniture.  To amend now to “furniture” would exceed the scope of the original wording.  The applicant must either amend this wording to identify specific items of furniture within the scope of the original identification, or delete the wording.

 

Hangers for clothing, jewelry boxes not made of metal – Again this wording is beyond the scope of the original identification.  Such goods did not appear in the identification as originally filed.  The applicant must delete this wording.

 

Sculpture and statutes made of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these materials – With the exception of sculpture and statutes made of wood, bone, ivory, and plastics, the remaining wording is beyond the scope of the originally filed identification. 

 

Window shades, and window blinds – Again, these goods are beyond the scope of the original identification and must be deleted.

 

Class 21

 

Hair combs, sponges for applying body powder; hair brushes – These goods are beyond the scope of the original identification of goods and must be deleted.

 

Wine buckets – This wording is beyond the scope of the original identification and must be deleted.

 

Candelabras not of precious metal – As indicated in the prior office action, the applicant must indicate that these goods are “non-electric,” since “electric candelabras” are in class 11.

 

Coffee servers not of precious metal – Again, the applicant must indicate that these goods are “non-electric.”

 

Class 24

 

Bath mats – As indicated in the prior office action, the applicant must indicate whether these goods are “fabric” (class 24), or “plastic” or “rubber” (class 27).

 

Blankets – The applicant must indicate the type of blankets, noting that some blankets are classified in classes other than 24.

 

Class 27

 

Time for covering existing floors – It is unclear just what these goods are.  The applicant must amend this wording to clarify the nature of the goods.

 

For example, the wording may be amended in the entirety as follows:

 

            Class 11:

-         electric candelabras.

 

            Class 16:

-         albums, namely, photo albums, souvenir albums, address books, announcement cards, appointment books, baby books, cards, namely, greeting cards, visiting cards, clothing patterns, diaries, gift wrap, guest books, picture books, stationery writing paper and envelopes.

 

Class 19:

-         tiles, statutes and statuettes of stone, concrete, and marble.

 

Class 20:

-         furniture, mirrors for furniture, picture frames, cushions, hangers for clothing, jewelry boxes not made of metal, sculpture and statutes made of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these materials, or of plastics, window shades, and window blinds.

 

Class 21:

-         hair combs, sponges for applying body powder; hair brushes, beverage glassware, plates, bowls, cups, saucers made out of porcelain and earthenware, bowls, bread boxes, wine buckets, non-electric candelabras not of precious metal, candlesticks not precious metal, non-electric coffee servers not of precious metal, drinking glasses, plates, soap dishes, tea servers not of precious metal.

 

Class 24:

-         textile fabrics for use in the manufacture of clothing; bath linen, fabric bath mats, bed linen, blankets, namely, __________ [identify specific goods], curtains, unfitted fabric furniture covers; handkerchiefs, kitchen towels.

 

Class 27:

-         rubber bath mats; plastic bath mats; carpets, rugs, doormats, linoleum for covering existing floors, time for covering existing floors, non-textile wall hangings.

 

Class 34:

-         manufactured tobacco, smoker's articles, namely, pipes, match-holders, cigar holders, cigarette holders, cigarette cases, cigar scissors; matches.

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names.  TMEP sections 1402.01 and 1402.03(a).

 

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. Section 2.71(a); TMEP section 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 applicant must adopt the appropriate international classification for the specified goods. The International Classification of Goods and Services for the Purposes of the Registration of Marks, developed by the World Intellectual Property Organization, classifies every product and service into one of forty‑two classes.  The Patent and Trademark Office uses this system to classify goods and services.  37 C.F.R. Section 6.1; TMEP section 1401 et. seq.

 

Requirements for a Multiple-Class Application

 

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/services 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/services 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 10, 2000, the fee for filing a trademark application is $325 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

If the applicant has any questions or needs assistance, please telephone the assigned examining attorney.

 

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116, (703) 306-7919

fax: (703) 746-8116; ecom116@uspto.gov

 

 

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.