To: | NHB INTERNATIONAL INC. (jjtam@msn.com) |
Subject: | TRADEMARK APPLICATION NO. 76456217 - HOLLYWOOD STAR - N/A |
Sent: | 3/2/03 2:38:31 PM |
Sent As: | ECom111 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/456217
APPLICANT: NHB INTERNATIONAL INC.
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CORRESPONDENT ADDRESS: JAMES TAM LAW OFFICES OF JAMES TAM 511 E GARVEY AVE STE 208 MONTEREY PARK CA 91755-1974
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom111@uspto.gov
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MARK: HOLLYWOOD STAR
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: jjtam@msn.com |
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 76/456217
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 which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The wording “products” in the identification of goods is unacceptable as indefinite. The applicant may adopt the following identification, if accurate:
International Class 029: preserved cherries, milk and milk products excluding ice cream, ice milk and frozen yogurt; edible oils and fats
TMEP section 804
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 that are not within the scope of goods set forth in the present identification.
The applicant must submit a transliteration of all foreign wording in the mark. 37 C.F.R. Section 2.61(b); TMEP Section 809. It should be in the following form.
The Chinese characters in the mark transliterate to ________________ and this means BEAUTIFUL STAR BRAND in English
Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney 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. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP §1213.01(b).
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The applicant must insert a disclaimer of the Chinese character that translates to BRAND in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). The wording is merely descriptive because
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use Chinese character that translates to BRAND apart from the mark as shown.
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing. The following cases explain the disclaimer requirement more fully: In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
The applicant must indicate its state of incorporation. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.
/Karen M. Strzyz/
Karen M. Strzyz
Trademark Attorney
Law Office 111
703-308-9111 ext. 470
fax 703-746-6334
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.