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

 

This letter responds to the communication filed on September 4, 2003.  Please note that all issues not discussed in this office action have been resolved.  This letter is a FINAL office action.

 

The application was originally refused because the applicant failed to properly identify its goods and/or services.  The applicant’s amended identification of goods and/or services is unacceptable.  Therefore, the requirement for an acceptable identification of goods and/or services is maintained and made FINAL.

 

Identification and Classification

The applicant’s amended identification of goods and/or services is unacceptable because it fails to describe the goods with sufficient specificity and incorrectly classifies the goods.

 

Class 6:

It is unclear whether all of the goods are made of metal or only the awards are made of metal.  Moreover the wording “awards” is indefinite; the applicant must describe the awards using the common commercial name of the goods, e.g., trophies.

 

Class 20:

The applicant incorrectly classified the clocks in this class; clocks are classified in class fourteen.  Again, the nature of the awards is unclear, as is the wording “gifts.”  The wording gifts, just like the wording awards, could encompass a wide variety of goods that could be classified in a number of different classes depending on the nature of the goods.  The applicant must state the common commercial name for the goods.

 

Class 21:

The wording “award items made of glass” is indefinite; the applicant must state the common commercial name for the goods.

 

Class 35:

Acceptable as amended.

 

A written application must specify the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To “specify” means to name in an explicit manner.  The identification of goods or services should set forth common names, using terminology that is generally understood.  The language used to describe goods or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field.  An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.

 

The identification of goods or services must be specific, definite, clear, accurate, and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953). 

 

The identification should state common names for goods or services, be as complete and specific as possible and avoid indefinite words and phrases.  The terms “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “products,” “concepts,” “like services” and other indefinite terms and phrases are almost always unacceptable. 

 

The terms “namely” and “consisting of” are definite and are preferred whenever setting forth an identification that requires greater particularity.  Vague terminology should be replaced by “namely” and “consisting of” whenever possible.

 

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, if accurate:

 

Common metal award and recognition products, namely, trophies, key rings, and awards in the nature of [list the common commercial name for the goods, e.g., trophies.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.] in International Class 6;

 

Award and recognition products, namely, clocks in International Class 14;

 

Award and recognition products, namely, desk ornaments made of plastic or wood in the nature of [list the common commercial name for the goods, e.g., paperweights.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.] in International Class 16;

 

Award and recognition products, namely, gifts in the nature of [list the common commercial name for the goods.  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];

 

Award and recognition products, namely, non-metallic trophies, plaques, wooden plaques ready for engraving, non-metallic jewelry boxes, nameplates, and non-metallic awards in the nature of [list the common commercial name for the goods.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.] in International Class 20;

 

Award and recognition products in the nature of commemorative items, namely, beverage glasses and award items made of glass in the nature of [list the common commercial name for the goods.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.] in International Class 21;

 

Retail store and wholesale store featuring awards, plaques, trophies, certificates, medals, ribbons, flags and banners, laminating, engraving, engraved articles for award and 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 that are not within the scope of goods set forth 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. 

 

Appropriate Responses

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

/Brian J. Pino/

Examining Attorney

Law Office 114

301.604.0916

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.