Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

FINAL PRIORITY 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  76/392879

 

The following issues were discussed in communication with Howard Miskin on May 3, 2005.

 

FINAL REFUSAL OF CONCURRENT USE CLAIM - CONCURRENT USE NOT ALLOWED IN APPLICATIONS BASED ON SECTION 1(b)

 

The applicant amended the application to reflect concurrent use with Registration No. 1065521.  However, the application is based on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).  The refusal of the concurrent use claim is made FINAL.

 

In an application based on a bona fide intent to use the mark in commerce under 15 U.S.C. §1051(b), the applicant may not amend to seek concurrent use registration until the applicant files an acceptable amendment to allege use or statement of use. 37 C.F.R. §§2.73(b) and 2.99(g).  TMEP §1207.04(b).

 

The applicant must either:

 

1)      delete the concurrent use claim from the application; or

 

2)      file an allegation of use under Trademark Act Sections 1(c) or 1(d), 15 U.S.C. §§1051(c) or (d). 37 C.F.R. §2.35(b)(8).

 

The applicant has submitted arguments in favor of registration.  However, the examining attorney is not persuaded.  Trademark Rules Section 2.73(b) states the following:

 

An application under Section 1(b) of the Act may not be amended so as to be treated as an application for a concurrent registration until an acceptable  amendment to allege use under Section 2.76 or statement of use under Section 2.88 has been filed in the application.  37 C.F.R. Section 2.73(b).

 

As such, the examining attorney maintains and makes the FINAL the refusal of the amendment for concurrent use.   

 

PLEASE NOTE:  The refusal to register under Section 2(d), 15 U.S.C. Section 1052(d), based on a likelihood of confusion with U.S. Registration No. 1065521, is continued.  That refusal was made FINAL on April 30, 2003.

 

RESPONDING TO THIS OFFICE ACTION

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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.

 

A prompt response to this Office Action will expedite prosecution.

 

 

 

Mitchell Front /mf/

Examining Attorney

Law Office 111

(571) 272-9382

 

 

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.