UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/434908
APPLICANT: SUZUKI, Nobuyuki
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CORRESPONDENT ADDRESS: Neil F. Greenblum and Bruce H. Bernstein Greenblum & Bernstein P.L.C. 1950 Roland Clarke Place Reston VA 20191
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: S
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CORRESPONDENT’S REFERENCE/DOCKET NO: T22550
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/434908
The applicant’s response to the first Office action was filed on June 16, 2003. The examining attorney has reviewed the applicant’s amendments and arguments in favor of registration. The amended identification of goods and substitute specimen have been accepted and entered into the record. As to the other outstanding issues, the examining attorney has determined as follows in this second non-final Office action.
In response to the examining attorney’s request for a concise description of the mark, the applicant has proposed the following description:
“The mark consists in part of the stylized letters S, O and G.”
The proposed description is confusing, because the application clearly states (at page 1) that the mark is for a design of the letter “S” with “multiplex line.” Further, the applicant’s response to the first Office action at page 1 clearly states that the mark is for [the letter] S.
Based on the applicant’s statement in the application that the mark consisted of the letter “S,” this Office entered the proposed mark into the Office’s databases as “S,” and the examining attorney (previously) searched the Office records for stylized registered or pending “S” marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Because the applicant has now indicated that the mark consists in part of the letters “S, O and G,” the applicant must explain the discrepancy in the proposed description of the mark and the application. The applicant is also advised that the examining attorney will conduct an additional search of the Office records for similar registered or pending marks upon clarification of the mark.
In the first Office action, the examining attorney indicated the following:
The applicant must submit a concise description of the mark. 37 C.F.R. Section 2.37; TMEP section 808 et seq.
In its response, the applicant has proposed the description, “[t]he mark consists in part of the stylized letters S, O and G.” For the following reasons, the requirement for description of the mark is MAINTAINED.
The proposed description of the mark is unacceptable, because it is not a comprehensive description, as maybe particularly noted from the applicant’s use of the wording “in part.” The applicant’s mark consists of the following design:
[GRAPHIC OF APPLICANT’S MARK INSERTED HERE]
An acceptable description would clearly and concisely describe each and every element of the mark and include a description of where the “S,” “O,” and “G” appear in the mark.
In the first Office action, the examining attorney made the following requirement:
The applicant must indicate whether the design in its mark is a three dimensional depiction of an object such as (but not limited to) a clasp for a belt. 37 C.F.R. Section 2.61(b); TMEP Section 808.03(c). Additionally, the applicant must submit a detailed description of how the mark will be used on the goods, including, but not limited to, belts. This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02. If the applicant does not provide the information required herein, registration may be refused. The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration. See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).
In its response to the first Office action, the applicant has responded to the aforementioned requirement as follows:
“As shown by the attached substitute specimen, it is readily apparent that the mark is used in a two dimensional manner and is not used in a three-dimensional depiction, and is intended to be so used on all [sic] applicant’s goods.”
For the following reasons, the requirement for particular information is MAINTAINED.
The foregoing statement submitted by the applicant is not adequately responsive to the requirement for particular information, because the applicant has not submitted a detailed description of how the mark will be used on the goods, including, but not limited to, belts. Specifically, the applicant’s statement alleges that the mark “is intended” to be used in a two-dimensional manner, but does not explain how the mark will be used on the goods (e.g., on hang tags for the goods, on labels stitched onto the goods, imprinted on the goods themselves, engraved on belt buckles, etc.).
FEE INCREASE EFFECTIVE JANUARY 1, 2003 (FOR INFORMATION ONLY)
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
CHANGE OF ADDRESS FOR MAILING TRADEMARK CORRESPONDENCE (FOR INFORMATION ONLY)
To expedite processing, the Office encourages parties to file documents through the Trademark Electronic Application System, at http://www.gov.uspto.report/teas/index.html, wherever possible.
Effective May 1, 2003, the mailing addresses for filing trademark-related documents on paper has changed. See notices at 68 FR 19371 (April 21, 2003) and 68 FR 14332 (March 25, 2003).
All trademark-related correspondence filed by mail, except for documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3514
The mail box designations previously listed in TMEP §305.01 are no longer in use.
Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/. Paper documents and cover sheets to be recorded in the Assignment Services Division should be sent to:
Mail Stop Assignment Recordation Services
Director of the United States Patent and Trademark Office
P. O. Box 1450
Alexandria VA 22313-1450
Copies of trademark documents can be ordered through the Office’s website at http://www.uspto.gov. Requests for certified or uncertified copies of trademark documents filed on paper should be sent, with an authorization to charge the fee to a credit card or USPTO deposit account, to:
Mail Stop Document Services
Director of the United States Patent and Trademark Office
P. O. Box 1450, Alexandria VA 22313-1450
ELECTRONIC RESPONSES (FOR INFORMATION ONLY)
If the applicant chooses to send an official response to this Office action via e-mail (to ecom108@uspto.gov), the applicant is advised that the response must:
(1) be in English;
(2) include the entire response as e-mail text, not as an attachment;
(3) list the serial number in the "Subject" line; and
(4) include any specimens or evidence in jpg or gif format only.
For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format. Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted.
Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/. (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised. Failure to comply with these additional requirements will result in delays in prosecuting your application.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the undersigned examining attorney.
Sonya B. Stephens
/Sonya B. Stephens/
Trademark Attorney
Law Office 108
(703) 308-9108 ext. 227 (phone)
(703) 746-8108 (fax)
ecom108@uspto.gov
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.