Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/362155

 

This letter responds to the applicant’s communication filed on April 7, 2005.

 

The applicant (1) failed to address the identification of services issue noted in the Suspension Letter of December 12, 2003, (2) submitted a copy of the corresponding foreign registration, and (3) maintained the filing bases under Sections 1(b) and 44.  Number 3 is acceptable.

 

Recitation of Services under Section 1(b) / Refusal under Section 2(d)

The recitation of services under Section 1(b) differs from that under Section 44 to the extent that the Section 1(b) services also claim “gasoline retail outlet” services.  Since these services form the basis of the refusal under Section 2(d), the Section 2(d) refusal is maintained and continued.

 

Mark Differs on Drawing and Foreign Certificate

The drawing in the U.S. application is unacceptable because the mark depicted thereon does not correspond to the mark depicted in the foreign registration.  Applicant must either (1) amend the drawing so that it conforms to the mark as shown in the foreign registration; or (2) amend the basis for registration from Section 44 of the Trademark Act to Section 1(a) or Section 1(b) of the Trademark Act.  15 U.S.C. §§1051(a) and (b) and 1127; 37 C.F.R. §2.51; TMEP §§807.12, 807.12(b), 807.14, 1011.01 and 1011.03. 

 

The mark shown on the drawing differs from the mark shown on the foreign registration to the extent that the mark under the foreign registration is limited to the mark as described in the color claim.  Since the mark in the present application is not limited to any particular color combination and the rectangular design is not evident, the marks are not substantially exact representations of each other.

 

The “substantially exact representation” standard is construed narrowly.  Only slight, inconsequential variations between the mark in the United States application and the mark shown in the foreign registration are permitted.  In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995); United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988).  For example, non-material informational matter such as net weight or contents may be deleted.  Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration.  In re Hacot-Colombier, 105 F.3d at 619, 41 USPQ2d at 1525; TMEP §1011.01.

 

The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is more strict than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act.  In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act, and this exception should be construed narrowly to ensure that foreign applicants cannot obtain a registration in the United States of matter that could not have been registered in the foreign country.  9 USPQ2d at 1483-84; TMEP §1011.01.

 

 

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.  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.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Yong Oh (Richard) Kim/

Trademark Examining Attorney

Law Office 115

(571) 272-9476

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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