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  76/362742

 

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

 

This letter responds to the applicant’s communication filed on May 21, 2002 in which the applicant 1) submitted an amended drawing of the mark, and 2) amended the identification of goods.  Neither of these amendments is acceptable and the following new issues are raised.

 

APPLICANT MUST SUBMIT A NEW DRAWING

 

The applicant has amended the mark on the drawing from REMNANT BOARDING CO. in stylized form to the mark REMNANT displayed in a different stylization with bold lettering and spaces between the letters.  The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).

 

The applicant indicated in its response that it was submitting a “new typed drawing.”  On a “typed drawing,” the mark is depicted by using a typewriter or word processor.  The mark must be typed entirely in capital, or upper case, letters, and there should be no spaces between letters of a word.  TMEP section 807.06.  The applicant’s new drawing did not meet these requirements. 

 

To successfully amend the mark to a typed drawing, in the text of your response, indicate that the applicant amends the mark to a typed drawing to appear as follows:  REMNANT.

 

Since the new drawing is deemed unacceptable, the original drawing remains in effect until a new amendment is submitted.  If the applicant wishes to retain the wording “boarding company” in the mark, the applicant must also submit a disclaimer of this wording as required in the first office action.

 

IDENTIFICATION OF GOODS/RECITATION OF SERVICES

 

The wording “production of clothing” in the identification of goods is too broad because it could include goods and services classified in more than one international classes.  “Production” indicates manufacture and the manufacture of clothing is classified as a service in International Class 40, while clothing goods are classified in International Class 25.  If the applicant is providing the clothing themselves, the applicant must amend to delete the wording “the production of” from the identification of goods in International Class 25.  The applicant may amend this wording to the following, if accurate: 

 

Clothing, namely, jacket, pants, shirts, hats, caps, underwear, scarves, skirts, shorts, head bands, sweat shirts, sweat pants, sweat shorts, and coats, in International Class 25.

 

TMEP §1402.01.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or email.  306; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

The following authorities govern the processing of trademark applications:

§         The Trademark Act, 15 U.S.C. Section 1051 et seq.;

§         Trademark Rules of Practice, 37 C.F.R. Part 2;

§         Trademark Manual of Examining Procedure (TMEP).

To access these resources, please see http://www.gov.uspto.report/web/offices/tac/.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Barbara Brown/

Trademark Attorney, LO 116

TEL (703) 306-7924

FAX (703) 746-8116

barbara.t.brown@uspto.gov (informal)

ecom116@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.