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  76/426747

 

This letter responds to the applicant’s communication filed on February 15, 2004. The applicant’s responses dated September 30, 2004, February 7, 2005, and February 15, 2005 merely included dates of use and an advertisement.  However, none of the other substantive issues were addressed.  Therefore, the following issues are continued.  The requirement to amend the identification of goods is withdrawn.

 

Date of Use Anywhere is Later than Date of First Use in Commerce

Applicant must amend the dates of use to specify a date of first use anywhere that is not later than the date of first use in commerce.  Applicant must verify this corrected date of first use anywhere with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

The date of first use anywhere specified in the response dated February 15, 2005 is June 14, 2002.  That date is after March 1998, which was set forth as the date of first use in commerce in the responses dated February 15, 2005 and February 7, 2005.  It is not possible for the date of first use anywhere to be later than the date of first use in commerce, because use in commerce by definition includes use anywhere.  TMEP §903.04.

 

 

 

 

Cannot Assert Section 1(a) and 1(b) for the Same Goods or Services

The applicant asserts use of the mark in commerce for jewelry, rings and applicant asserts that it

has a bona fide intent to use the mark in commerce for the same goods/services. An applicant may

not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. Section

1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C.

Section 105 1(b), for the same goods or services. 37 C.F.R. Section 2.34(b)(1). The applicant must

delete one basis or divide the goods/services between the two bases, as appropriate.

 

Combined/Multiple Class Application Requirements for Applications Filed Under Section 1(b)

The application identifies goods and/or services that are classified in more than one class; however, the fees submitted are sufficient to cover one class(es) only. 

 

Applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 per class to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 per class to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

Requirements for a Combined Application – Goods Based on Use in Commerce Section 1(a)

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods based on actual use in commerce under Trademark Act Section 1(a):

 

(1)     Applicant must list the goods by international class with the classes listed in ascending numerical order;

 

(2)     Applicant must submit a filing fee for each international class of goods not covered by the fee already paid; and

 

(3)     For each additional class of goods, applicant must submit:

 

(a)     dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)     one specimen showing use of the mark for each class of goods; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)     a statement that “the specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application;” and

 

(d)     verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

Ownership of Prior Registrations

If the applicant is the owner of Registration No. 1351611, the applicant must submit a claim of ownership. 37 C.F.R. Section 2.36; TMEP section 812.

 

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

 

 

 

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.

 

 

/Mrs. A. D. Saunders/

Trademark Attorney

Law Office 108

(571) 272 - 9349

(571) 273 - 9349 (fax - formal responses only)

 

 

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.