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  76/411873

 

This letter responds to the applicant’s March 10, 2003 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.

 

Amendment to Identification – FINAL REFUSAL

 

In the first action, the applicant was advised that its identification was unacceptable. In response, the applicant proffered an amended identification. That identification is unacceptable for the reasons set forth below and the refusal to register the mark based on informalities in the identification is repeated and made final.

 

Please note, while the amendment to the identification is largely acceptable, one portion is problematic. “Precious metal buttons” is unacceptable because it is unclear whether the phrase refers to actual buttons such as those used on clothing, or whether “buttons” refers to the shapes into which the semi-wrought metals are processed. Please note, “buttons for clothing” are classified in class 26 regardless of composition. However, “semi-wrought precious metals cast into button-shaped discs for use in further manufacture” is properly classified in class 14. Therefore, given this uncertainty as to the goods, the applicant must clarify the nature of its “buttons” and classify them accordingly. 

 

Amendment Guidelines

 

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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.

 

Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. 

 

The Acceptable Identification of Goods and Services Manual may be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600).  See notice at 1190 TMOG 67 (Sept. 17, 1996).  The applicant is advised that the Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Insufficient Fee Requirements

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

 

Options

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §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. §2.65(a).

 

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.

 

 

 

 

 

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(703)308-9113 ext. 286

John.Lincoski@USPTO.GOV