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  76/413635

 

The Office has reassigned this application to the undersigned examining attorney.

 

Applicant’s Correspondence

The applicant’s response to the first office action was received and entered into the record.  The examining attorney responds to the applicant’s arguments below and issues two new requirements.

 

Prior Pending Refusals—Withdrawn

The examining attorney withdraws the potential likelihood of confusion refusal for Application No. 75854979 as it has abandoned and for Application No. 75873104 as the Applicant owns that application.

 

Likelihood of Confusion Refusals—Continued

The examining attorney continues the likelihood of confusion refusals for Registration Nos. 1977886, 2480446, and 2547896 as the marks contain nearly the same wording “Classroom Connect” and “classroom connection”.  The applicant argues that the word “Cricket” and the design of the cricket are sufficient to distinguish the marks from each other and that teachers would associate the applicant’s mark with the applicant’s line of “cricket” teaching guides.  However, the registrant’s mark uses nearly the same wording “classroom connect” instead of “classroom connection” both for teaching guides to be used by educators.  It is likely that consumers would see the registrant’s marks and wonder if they are a part of the applicant’s “cricket” line if they were to all be registered.  Therefore, the examining attorney continues the likelihood of confusion refusal for the above registrations.

 

Description

The design in the applicant's mark is small and difficult to make out.  The applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The statement may be in the following form:

 

The mark consists in part of the word “Cricket” followed by the design of a cricket.

 

New Drawing Required

The drawing is not acceptable because it will not reproduce satisfactorily.  The design of the cricket is black and the outline of the design can not be clearly made out.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52. TMEP section 807.07(a).

 

Drawing Requirements

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

 

 

/Virginia T. Isaacson/

Trademark Attorney

Law Office 110

(703) 308-9110 x233

(703) 746-6241 [fax]

ecom110@uspto.gov (for formal responses)

 

 

 

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.