Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

PRIORITY ACTION

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/392879

 

Upon further consideration, the Director has restored jurisdiction to the trademark examining attorney under 37 C.F.R. §2.84(a).  The Office apologizes for any inconvenience this may cause.

 

The following issues were discussed in communication with Howard Miskin on September 15, 2004.

 

CONCURRENT USE NOT ALLOWED FOR 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). 

 

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).

 

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.

 

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.

 

My office will move on October 26, 2004.  To reach me by phone after that date call (571) 272-9382. 

 

A prompt response to this Office Action will expedite prosecution.

 

 

 

 

Mitchell Front   /mf/

Trademark Attorney, Law Office 111

(703) 308-9111 ext. 122

 

 

 

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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