Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/458670

 

The following issues were discussed in communication with Carol Matthews on March 20, 2003.

 

 

Disclaimer

The applicant must disclaim the descriptive wording “SPARKLE” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of a feature or characteristic of the goods. 

 

The definition of “SPARKLE” is:

 

2.                              verb  To give off or reflect flashes of light; glitter.

1.                  noun  A small spark or gleaming particle.

2.                  noun  A glittering quality. [1]

 

The applicant’s identification of goods states that the applicant’s books contain glitter or foil or holographic foil.  Thus, the term describes a feature or characteristic of the applicant’s goods, namely, that the books contain glitter and/or will have the characteristic that they glitter or sparkle.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use SPARKLE apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

Response

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them. 

 

 

NOTICE TO APPLICANT:  Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration was 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 is $335.00 per class for classes added on or after January 1, 2003.

 

 

/Jennifer H. Dixon/

Attorney Advisor, Law Office 110

 

Phone: 703-308-9110  EXT. 149

Fax:  703-746-8110

Email for Response: ecom110@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