UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/447744
APPLICANT: Pleasant Company
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CORRESPONDENT ADDRESS: MENZI L. BEHMD-KLODT PLEASANT COMPANY 8400 FAIRWAY PLACE MIDDLETON, WI 53562
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom107@uspto.gov
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MARK: THE AMERICAN GIRLS COLLECTION
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/447744
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. The assigned examining attorney has reviewed the referenced application and determined the following.
The applicant must disclaim the descriptive wording COLLECTION apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use COLLECTION apart from the mark as shown.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive or deceptively misdescriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive or deceptively misdescriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
Although all of applicants goods appear to be consistent with the identification manual. Snow globes are actually in class 28 whereas the other goods are in class 20. Applicant may choose to add class 28 or delete snow globes.
If the applicant adds more classes to this application when amending the goods or services, the applicant must prosecute this application as a combined, or multiple‑class, application. If so, the applicant must comply with each of the following.
(1) The applicant must list the goods or services 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 or services not covered by the fee already paid. As of January 1, 2003, the filing fee is $335.00 per class. 37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.
(3) For every additional class, a matching specimen and dates of use must correspond to the added class. If necessary, a new specimen for each class and dates of use are required.
For substitute specimens that differ from the specimens of record, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application. 37 C.F.R. Section 2.59(a); TMEP section 905.10.
Current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system. The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone. Callers may request information for up to five registration number or application number records per call.
/Brett Tolpin/
Attorney-Advisor (Trademarks)
Law Office 107
Phone: (703) 308-9107 x226
Fax: (703) 746-8107
ecom107@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.