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  76/349492

 

Dear Applicant and/or Applicant’s Representative:

 

The Office has reassigned this application to the undersigned examining attorney.

 

This letter responds to the applicant’s communication filed on August 11, 2003.  In the first Office action, the applicant was required to amend the identification of goods.  In addition, the first examining attorney noted an earlier filed potentially conflicting application (75/667022). The applicant responded by amending the identification, and providing arguments against suspension of the instant application.

 

In light of the applicant’s arguments, the current examining attorney withdraws the cited application (now registered), and will not issue a refusal based upon Section 2(d).  In addition, the requirement to respond to the identification issues raised by the previous examining attorney has been fulfilled and is herein withdrawn.  However, after further review, the current examining attorney raises the following new issue regarding the identification of goods.

 

 

Classification of the Goods

 

The applicant has classified the “fragrant drawer liners” incorrectly.  The applicant must amend the application to classify these goods in International Class 16.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The decision as to the proper classification of goods or services is a purely administrative matter which is within the sole discretion of the United States Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).

 

Clarification of Number of Classes Applied-For Needed

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

The wording of goods in the original application suggests the following classes:

 

Class 3 – fragrances, namely, perfume, cologne, eau de toilette, room fragrances, sachets, fragrant linen wash; hair shampoo; body soaps and scrub, namely, body wash and facial scrub; skin soaps; body powder and talc; hair gel, shampoo and conditioner; personal deodorants; after shave lotion, after shave cream, after shave balm, body and massage oils, body lotions and body creams; potpourri; non-medicated bath salts

 

Class 16 – fragrant drawer liners

 

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 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

/Pamela Y. Willis/

Trademark Attorney

Law Office 106

703-308-9106 ext. 126

703-746-8106 (FAX)

 

 

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.