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  76/447736

 

PLEASE NOTE:  All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Identification of Goods

The identification of goods is unacceptable as indefinite and includes goods and services in more than one International Class.  The applicant may adopt the following identification, if accurate:

 

NEWSLETTER IN THE FIELD OF PETS in International Class 16; and

 

ADVICE ON THE CARE OF PETS in International Class 44.

 

TMEP section 804.

 

For aid in selecting acceptable identification of goods and services and determining proper classification, the searchable Manual of Acceptable Identification of Goods and Services is available on the Agency website at www.uspto.gov.

 

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(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Classification

Because of the broad language used by applicant in the identification of goods/services, applicant may have to add an additional international class(es) as indicated above upon the applicant’s amending the identification of goods/services to specify the goods/services.

 

Additional Classes

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/serivces by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(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. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  Effective January 10, 2000, the fee for filing a trademark application is $325 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Disclaimer

The applicant must disclaim the descriptive wording "PET" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because PET describes a feature of the goods and services.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use PET apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

Search Clause

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. Section 1052(d).  TMEP section 1105.01.

 

/Carol Spils/

Carol Spils

Trademark Attorney

Law Office 101

(703)308-9101 ext. 174

fax# (703)308-7182

carol.spils@USPTO.gov

ecom101@US

 

 

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.