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  76/454883

 

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

 

The examining attorney has searched the Office records and has found no similar registered or pending mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02. 

 

The applicant must respond to the requirements listed below in order to avoid abandonment of the application.

 

Identification and Classification

The identification of goods is unacceptable as indefinite because it does not describe the goods with sufficient specificity; the goods could be classified in several classes.  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names.  TMEP §§ 1402.01 and 1402.03(a).

 

Additionally, the recitation of services is unacceptable as indefinite because it does not describe the nature of the services with sufficient specificity; the nature of the wholesale services is not clear.  The applicant must amend the recitation to specify the common commercial name of the services.  TMEP §1402.11.  In the recitation of services, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as "services in connection with..." or "such as" or "including" or "and like services" or "systems" or "products" or "concepts" or "not limited to....”  TMEP sections 804.08(c) and 1301.05.

 

If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.  TMEP §1402.01.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.  TMEP §1402.11.  Please note that the vast majority of goods and services have a common commercial name.  Acceptable common commercial names are included in the Trademark Acceptable Identification of Goods & Services Manual available free of charge at the Office web site located at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

However, the applicant may adopt the following identification of goods and services, if accurate:

 

Award and recognition products, namely, trophies of common metal in International Class 6;

 

Award and recognition products, namely, medallions and precious metal trophies in International Class 14;

 

Award articles and recognition articles, namely, [list the common commercial name for the goods, e.g., printed awards.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.] in International Class [specify – the class will depend on the nature of the goods – class 16 for the example given];

 

Award and recognition products, namely, non-metal trophies, and plaques in International Class 20;

 

Award and recognition products in the nature of commemoration items, namely, [list the common commercial name for the goods, e.g., commemorative plates.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.] in International Class [specify – the class will depend on the nature of the goods – class 21 for the example given].

 

Retail stores featuring awards, plaques, trophies, certificates, medals, ribbons, flags and banners, laminating, engraving, engraved articles for award or recognition purposes, and commemorative items, provided at a fixed location and through a global computer network; wholesale stores featuring awards, plaques, trophies, certificates, medals, ribbons, flags and banners, laminating, engraving, engraved articles for award or recognition purposes, and commemorative items, provided at a fixed location and through a global computer network in International Class 35.

 

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. §2.71(a); TMEP §1402.06.  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.

 

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/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(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. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date. 

 

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays. 

 

Questions About This Action

If the applicant has any questions regarding this Office action, please call the examining attorney.

 

 

/Brian J. Pino/

Examining Attorney

Law Office 114

301.604.0916

703.308.9114

703.746.8114 Facsimile

ecom114@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.