UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/384288
APPLICANT: SAPUTO INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SAPUTO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 412941-324
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/384288
This letter responds to the applicant’s communication, filed in this Office on October 12, 2004, in which the applicant submitted a copy of the foreign registration to support the Section 44 filing basis.
The examining attorney has reviewed the foreign registration, and finds that it raises a new issue with regard to the identification of goods. Accordingly, this new non-final action is now issued to discuss this issue.
The applicant has identified a number of food products in Classes 29 and 30, including the goods listed as “alimentary pastes” and “sauces” in Class 30. However, the foreign registration identifies these two items more specifically, with the first being listed as “alimentary pastes, namely, vegetable, meat, cheese and tomato paste”; and with the second being listed as “sauces, namely, meat sauces, hot sauce, cheese sauce” in the foreign registration.
Accordingly, the identification of goods in the application for the Section 44 basis is not acceptable because it designates goods that are broader in scope than the identification set forth in the foreign registration. 37 C.F.R. §2.32(a)(6). The applicant must either: (1) amend the identification of goods in the application to correspond to the goods identified in the foreign certificate of registration; or (2) delete the Section 44 basis for the goods beyond the scope of the foreign registration and rely solely on the intent-to-use basis for those goods. 15 U.S.C. §1051(b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972).
Please note that if the applicant chooses to further limit the “alimentary pastes” and “sauces” in the application to correspond to the foreign registration, then the wording “alimentary pastes, namely, vegetable, meat, cheese and tomato paste” must also be transferred to Class 29. This Office normally understands the wording “alimentary pastes” to be referring to Class 30 pasta, which is why the wording was considered acceptable in Class 30. However, if the applicant is using the wording “alimentary pastes” to simply introduce particular types of food pastes (vegetable, meat, cheese and tomato paste), then this wording must be transferred to Class 29, since each of these types of food pastes are properly classified in Class 29, not Class 30. It is also noted that the applicant has already specifically listed “tomato pastes” in Class 29.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Elizabeth A. Hughitt/
Examining Attorney
Law Office 111
(571) 272-9384
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.