UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/384853
APPLICANT: Telefonica, S.A.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: TELEFONICA MOVISTAR
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CORRESPONDENT’S REFERENCE/DOCKET NO: T33218US2
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 76/384853
This letter responds to applicant’s communication filed on June 29, 2004.
The applciant submitted its foreign registration. The registration is acceptable and has been made of record.
The requirement to provide the name of the person who signed the declaration is withdrawn.
However, the applicant should note that the following requirements are continued and made FINAL.
The applicant must provide an English translation of all foreign wording in the mark, namely, TELEFONICA. 37 C.F.R. §2.61(b); TMEP §809.
Disclaimer
The applicant must disclaim the descriptive wording “TELEFONICA” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it describes the nature of the applicant’s goods, namely, providing telephonic or telephone services. A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use TELEFONICA apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
The applicant should note its attached registrations where the term TELEFONICA has been translated and/or disclaimed.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, and/or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on 10/19/04. To reach me by phone after that date call (571) 272-9272.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.
/Stephanie M. Davis, Esq./
Trademark Examining Attorney
Law Office 103
703.308.9103 ext. 210 (voice)
703.746.8103 (facsimile)
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.