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  76/324223

 

This letter responds to the applicant’s communication filed on 8/4/04.

 

In response to the inquiry about the issuance of a UK registration applicant states that the underlying application was divided into two and the class 38 services were abandoned.  A UK registration supporting the class 41 services has been made of record.

 

Class 38 still exists in this application because the second basis, Section 1(b) may be used to support it and you have not expressly deleted class 38.  Clarification and amendment is required.

 

Inquiry is also made whether you are maintaining Section 1(b) as an additional basis for the class 41 services?

 

Class 41 services exceed the scope of the UK registration

 

The wording “RENTAL OF RADIOS AND TELEVISIONS” in the identification of services is beyond the scope of the services listed in the foreign registration certificate and, therefore, must be deleted from the U.S. application.  The goods or services identified in an application under Trademark Act Section 44, 15 U.S.C. §1126, may not exceed the scope of those appearing in the foreign application or registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012 and 1402.01(b).

 

Also, because the UK registration specifically states “organization of sporting competitions, but not including any such services relating to professional wrestling events, and sports events” and also “but not including entertainment services relating to wrestling rendered through the medium of television” those restrictions must also be in the U.S. claim. We suggest that you add similar language to the services by changing “specifically excluding services relating to the sport of basketball” to read “specifically excluding services relating to the sports of basketball and wrestling”. 

 

Section 2(d) refusal is continued.

Registration nos. 2223618 and 2557970 are continued as bars to this application because the marks are virtually identical and the services are overlapping. 

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/G. Mayerschoff/

Trademark Attorney, LO-106

Hrs. 8:30 am- 6pm

703- 308- 9106 x118 [after Nov.1 '04 must call 571-272-9325]

Fax- 703- 746-810

 

 

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 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.