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  76/454151

 

SEARCH RESULTS

 

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 704.01.

 

However, the applicant should note the following issues:

 

IDENTIFICATION OF GOODS

 

The wording “keypads” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “computer peripherals, namely keypads”  and/or  “keypads for  [specify type, e.g., for computers, for calculators, etc.],” if accurate.  TMEP section 1402.

 

 

 

 

DRAWING

 

The drawing appears to be in typed format but is not typed entirely in capital letters.  Typed drawings which are not typed entirely in capital letters are not acceptable.  37 C.F.R. Section 2.52(a)(1); TMEP section 807.08.  As a result, the applicant must clarify whether it wishes for the proposed mark to be in typed or stylized format.  If typed, the applicant must submit a drawing on which the mark is typed entirely in capital letters.  If the applicant intends to show the mark in special form, the applicant must so clarify and submit an acceptable special‑form drawing.  37 C.F.R. Sections 2.51 and 2.52.

 

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

 

(1)  The letters must be in a font different in style and size from the heading of the drawing.

 

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

 

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

 

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

 

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

 

(6)  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.

 

(7)  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. Sections 2.51 and 2.52; TMEP section 807.05.  The Office will enforce these drawing requirements strictly.  TMEP section 807.

 

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.

 

INQUIRY ON SIGNIFICANCE

 

The applicant must indicate whether the wording “DOMETel” has any significance in the relevant trade,  industry, as applied to the goods, any geographical significance, or any meaning in a foreign language.  37 C.F.R. 2.61(b).

 

DUAL BASES OF APPLICATION

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant's intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  If the applicant does so, the applicant may not subsequently rely on the foreign registration.  TMEP section 1006.01.

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.

 

ADVISORY:   Fee increase effective January 1, 2003

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.

 

MISCELLANEOUS

 

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

 

 

 

/Susan Stiglitz/

Trademark Attorney

Law Office 103

703-308-9103, ext. 233

703-746-8103  (fax)

ecom103@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.

 

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.