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  76/271260

 

This application has been reassigned to the undersigned examining attorney, who has reviewed the applicant’s January 17, 2003 Amendment to Allege Use and response.  The applicant’s divisional request has also been processed by this Office’s Divisional Unit.

 

The Amendment to Allege Use, the deletion of Classes 1 and 36, and the amendment to the Supplemental Register are all acceptable and have been made of record.  Moreover, most of the applicant’s amendments to the identification of goods and the filing bases – with these amendments submitted in order to ensure that all of the goods are based on Section 1(a) and/or Section 44(e) so that the application could properly be amended to the Supplemental Register – are acceptable.  Specifically, the applicant amended Class 29 to divide out the dairy products covered by the foreign registration (which are now in the child application, Serial No. 76975517) and to delete the items that were covered solely by the Section 1(b) basis.  And in Class 30, the applicant filed the Amendment to Allege Use for all of the items that were under Section 1(b), deleted the Section 1(b) basis for the items that were based on both Section 1(b) and Section 44(e) (so that those items are now covered solely by the Section 44(e) basis), and clarified the “dessert fillings.” 

 

This action is non-final in nature.

 

Amended Identification of Goods – Clarifications Required

 

Because so many changes have been made to the identification, the applicant must confirm that the amended identification shown below is what was intended in the applicant’s response: 

 

Class 29: (Based on use in commerce) Processed olives; (Based on use in commerce and Section 44(e)) Vegetable oil, peanut oil, chicken, beef, tomato pastes, canned tomatoes, margarine, butter; (Based on Section 44(e)) Liquid and edible solid fats

 

Class 30: (Based on use in commerce) Vinegar, cookies, biscuits, crackers, pastries, rusks, breads, bread sticks, pretzels, croutons, bread crumbs, melba toast; custard based and chocolate based fillings for cakes and pies; cakes, tarts, flaky pastries; confectionery, namely, candies, mints, bubble gum, jelly beans, peanut brittle; table syrups, molasses, honey, cocoa, vegetable-based marinades; (Based on Section 44(e)) sauces, mustards, frozen yogurt, sugar, flour, coffee, ketchup, relish, alimentary pastes, ice cream; frozen milk, spices, bacon flavored croutons

 

In addition, the following clarifications are also required with regard to the amended identification of goods: 

 

(1) In Class 29, the first item – processed olives – is listed as based solely on use in commerce.  However, the foreign registration includes “olives” and the original identification included this item under the Section 44(e) basis.  Therefore, the applicant must either confirm that it wishes to still base this item solely on Section 1(a) and not the foreign registration, or the applicant may transfer this item to the portion of the Class 29 identification covered by both use in commerce and the foreign registration (or solely Section 44(e), if preferred).

 

(2) Also in Class 29, the item “butter” was listed twice – both as the last item (after “margarine”) covered by the dual Section 1(a) and Section 44(e) bases; and as one of the items covered solely by Section 44(e) that were divided out into the child application.  It is not clear whether the applicant intended to list this item twice under different filing bases, or whether the duplicate listing was inadvertent.  If this item was intended to be listed only in the new child application, then the applicant must delete “butter” from the current Class 29 identification in this case.

 

(3) The applicant must confirm that the correct use dates for the amended Class 29 identification are still July 1959 (use anywhere) and March 1994 (use in commerce).  This clarification is required because the goods that were divided out from Class 29 and inserted into the new child application include “cheeses,” which the applicant specified in its request to divide as supporting the use dates stated for the Class 29 identification.  Since cheeses are no longer part of the amended Class 29 identification, the applicant must confirm that the remaining items have the same use dates.  If new dates of use must be stated for this class, the applicant must verify the amended dates with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

New Specimen Required for Class 29

 

The original specimen submitted with the application for Class 29 showed the applied-for mark used in connection with cheese.  Accordingly, since this item has been divided out of this application and inserted into the new child application, the Class 29 specimen is no longer acceptable to show use of the mark on the remaining goods identified in this class.

 

Accordingly, the applicant must submit a new specimen showing use of the mark on or in connection with the goods currently listed in Class 29 under the Section 1(a) basis – i.e., processed olives, vegetable oil, peanut oil, chicken, beef, tomato pastes, canned tomatoes, margarine, and butter.

 

The applicant must also verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09. 

 

 

Foreign Registration Renewal Documentation Required

 

The foreign registration indicates that it is valid for 15 years from the registration date – which means that the registration expired on January 2, 2002 unless a renewal was filed.  Accordingly, the applicant must submit evidence that the foreign registration will be in force at the time of issuance of the United States registration.  The evidence must consist of an official certification or a true copy, a photocopy, a certification, or a certified copy of the certificate of registration showing that the foreign registration has been renewed.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a).

 

 

 

 

 

 

 

 

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

 

 

Elizabeth A. Hughitt

Examining Attorney

Law Office 111

(703) 308-9111 x 250

ecom111@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