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  76/412169

 

The assigned examining attorney has reviewed the referenced application and determined the following.  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

REFUSAL UNDER SECTIONS 1, 2 AND 45 OF THE ACT – INTERNATIONAL CLASS 16

 

The applicant has identified “stationery and posters” in International Class 16.  These goods do not appear to be goods in trade and must be deleted from the present application.  These goods appear to merely advertise and promote the applicant’s lottery services.  Therefore, registration is refused under Sections 1, 2 and 45 of the Act.

 

If the specimens, identification of goods, or other evidence in the record indicate that the applicant uses the mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney should refuse registration on the Principal Register under §§1, 2 and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052 and 1127, on the ground that the mark is not used on “goods in trade.” 

 

If a mark is not used on “goods in trade,” it is not registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), or on the Supplemental Register.

 

Section 45 of the Trademark Act, 15 U.S.C. §1127, defines a “trademark” as a “word, name, symbol, or device, or any combination thereof’ that is used or intended to be used in commerce to identify and distinguish his or her goods (emphasis added).”  Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be “goods in trade.”  Incidental items that an applicant uses in conducting its business (such as letterhead, invoices and business forms), as opposed to items sold or transported in commerce for use by others, are not “goods in trade.”  See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (reports and printouts not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); Ex parte Bank of America National Trust and Savings Association, 118 USPQ 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks and other printed forms, where forms are used only as necessary tools in the performance of banking services, and the applicant is not engaged in printing or selling forms as commodities in trade).

 

The stated refusal refers to Class 16 only and does not bar registration in the other class.  Please note, however, that failure to respond to a refusal that pertains to fewer than all classes in an application will result in abandonment of the combined application in its entirety.  TMEP §1403.05.

 

The applicant may respond to the stated refusal by doing one of the following:

 

(1)  amending the application to delete the class to which the refusal pertains;

 

(2)  traversing the refusal of the combined application as a whole; or

 

(3)  filing a request to divide the application, so that the mark may be published for opposition in the classes to which the refusal does not pertain (37 C.F.R. §2.87; TMEP §§1110.05, 1403.03 and 1403.05).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

ADDITIONAL REQUIREMENT

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following additional requirement.

 

RECITATION OF SERVICES – INTERNATIONAL CLASS 41

 

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:

 

Lottery services, namely, conducting and organizing lotteries for others, in International Class 41.  TMEP §1402.11.

 

In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP §§1402.03(a) and 1402.11.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

RESPONSE

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Glenn Clark/

Trademark Attorney

Law Office 115

(703) 308-9115, ext. 121

 

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.