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  76/337002

 

Dear Applicant and/or Applicant’s Representative:

 

This letter responds to the applicant’s communication filed on May 19, 2003.  In the most recent Office action, registration was refused and made final based upon Trademark Act Section 2(e)(1). Applicant responded by amending the application to the Supplemental Register.  In addition, the applicant submitted an amendment to allege use.

 

In light of the amendment of the application to the Supplemental Register, the refusal to register based upon Trademark Act Section 2(e)(1) is herein withdrawn.  However, the applicant must respond to the following issues regarding the amendment to allege use and the identification of goods.

 

Mark Differs on Drawing and Specimen

 

The drawing displays the mark as RED READERS.  However, this differs from the display of the mark on the specimen, where it appears as RED READER.  The applicant must either:

 

(1)  submit a new drawing of the mark which agrees with the specimen; or

 

(2)  submit a substitute specimen that shows use of the mark shown in the drawing.

 

37 C.F.R. §2.51; TMEP §807.14.  The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

 

If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the applicant used the substitute specimen in commerce prior to filing the amendment to allege use.  37 C.F.R. §§2.59(b) and 2.72(b). 

 

The applicant may withdraw the amendment to allege use.  If the applicant does so, the examining attorney will withdraw the requirement for a new drawing or specimen.

 

Owner of the Mark

 

In the present case, the original application, and other subsequent correspondence lists the owner of the mark as “American Eagle Co. Inc.”  However, the amendment to allege use lists the owner as “Teacher’s Discovery.”  There is no indication in the Office database, that the mark has been assigned and that assignment recorded.  The applicant must clarify this issue. 

 

The examining attorney must confirm that the proper party has filed the amendment to allege use.  Only the applicant or a valid assignee under §10 of the Trademark Act, 15 U.S.C. §1060, can file an amendment to allege use. 

 

If the party filing the amendment to allege use is the owner at the time of filing, but the records of the Office show title in another party, the applicant may submit evidence to establish chain of title within the response period specified in the examining attorney’s Office action.  See 37 C.F.R. §§3.71 and 3.73; TMEP §502.  To establish ownership, the party who filed the amendment to allege use must either:  (1) record an assignment or other document of title with the Assignment Services Division, and notify the Trademark Operation that the document has been recorded, specifying the reel and frame number at which the document is recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred.  37 C.F.R. §3.73(b)(1); TMEP §502. 

 

If the party filing the amendment to allege use was not the owner of the mark at the time of filing the amendment to allege use, the examining attorney should not approve the amendment to allege use.  The true owner may file a substitute amendment to allege use (including a filing fee) on or before the date the application is approved for publication.

 

If there has been a change of ownership and the new owner wants the registration certificate to issue in the new name, the new owner must record a document with the Assignment Services Division and notify the Trademark Operation that the document has been recorded.  37 C.F.R. §3.85; TMEP §502.01.  See also TMEP §502.01(a) regarding an examining attorney’s handling of an application after the mark has been assigned. 

 

Wording in the Identification of Goods must be Amended

 

The wording “continuing series of books for middle and high school students” in the identification of goods is unacceptable as indefinite because the applicant did not indicate the subject matter of the series of books.  The applicant may amend this wording to “continuing series of books for middle and high school students,” in International Class 16, if accurate.  TMEP §1402.01.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification.

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

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.

 

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond in a timely manner to each issue raised in this Office action.  The applicant should simply set forth in writing any response to the issues raised above.  The applicant or (applicant’s representative) must sign the response.

 

/Pamela Y. Willis/

Trademark Attorney

Law Office 106

703-308-9106 x126

703-746-8106 (fax)

ecom106@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.