UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/330067

 

The following issues were discussed in communication with James Lydon on September 26, 2003.  The examining attorney notes the receipt of the foreign registration.

 

IDENTIFICATION OF GOODS

 

The examining attorney maintains and makes FINAL the requirement for an acceptable and definite identification of goods.  The examining attorney accepts the identification of goods in class 9 and 38.

 

Class 16

 

The examining attorney maintains and makes FINAL the requirement for an acceptable and definite identification of goods.  The examining attorney accepts “identification cards” in class 16.  “Transport cards” is unacceptable as indefinite.  The applicant may replace the unacceptable wording with “cards not magnetically encoded fur use in transportation transactions.”

 

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.

 

REFUSAL APPLIES TO CLASS 16 ONLY

 

The stated refusal refers to Class 16 only and does not bar registration in the other classes.  Please note, however, that failure to respond to a refusal that pertains to fewer than all classes in an application will result in abandonment of the combined application in its entirety.  TMEP §1403.05. 

 

The applicant may respond to the stated refusal by doing one of the following:

 

(1)  amending the application to delete the class to which the refusal pertains;

 

(2)  traversing the refusal of the combined application as a whole; or

 

(3)  filing a request to divide the application, so that the mark may be published for opposition in the classes to which the refusal does not pertain (37 C.F.R. §2.87; TMEP §§1110.05, 1403.03 and 1403.05).

 

RESPONSE

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

 

/Kim Saito/

Examining Attorney, Law Office 102

703-308-9102 ext. 130

 

 

 

 

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