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  76/459190

 

The following is in response to the communication received on August 11, 2003.  The description of the meaning of the mark is accepted.  The requirement that the applicant clarify the name  entity type of the mark is hereby continued and made FINAL.  The requirement that the applicant amend the identification of goods is hereby continued and made FINAL.  The requirement that the applicant submit an acceptable drawing of the mark is hereby continued and made FINAL.

 

A.                Name and Entity Type of Applicant

 

In the first Office action in this case, the examining attorney required the applicant to clarify its name and entity type.  The applicant has responded by saying that it was a partnership, but that the partnership ended “due to irreconcilable differences” and that Terelle Coley is the sole proprietor of the mark.  Unfortunately for the applicant, the applicant cannot simply remove Mr. Walker from the application.  Rather, the applicant must file an assignment, in which Mr. Walker assigns his rights to Mr. Colani.  In the meantime, because the applicant’s have identified themselves a  partnership, the applicant must amend the preamble of the application to identify the applicant as follows, if accurate:  _____________, a partnership organized under the laws of _____________, composed of ________________.”  The applicant must list all general partners and their national citizenship or the state or country of their organization or incorporation, as appropriate.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.  Such a statement must identify Mr. Walker as a general partner until such time as Mr. Walker formally assigns his rights in the application with the Office.

 

B.                 Identification of Goods

 

The proposed amendment of the identification is unacceptable because the wording “embroidered patches, buttons, clothing patches, clothing buckles and clothing hooks” designates goods that are not within the scope of the identification that was set forth in the application at the time of filing.  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 et seq. and 1402.07.  The applicant may amend the identification to the following:  “Belt buckles, belts, blue jeans, boxers, caps, dresses, dress shirts, headbands, jerseys, lingerie, pants, pant suits, scarves, shorts, short sets, skirts, socks, swim wear, ties, t-shirts, tops and wristbands,” in International Class 25.

 

The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order.  37 C.F.R. Section 2.74(b).  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(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services listed in the present identification.

 

C.                Drawing

 

An applicant cannot amend the drawing of the mark if the change materially alters the mark.  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.  37 C.F.R. Section 2.72.  The applicant’s deletion of the diamond shape appearing over the letter “I” in the mark constitutes a material alteration of the mark and, as such, is unacceptable.  The applicant must submit a substitute drawing in which the mark contains this diamond element.  The drawing must comply with ALL requirements for special-form drawings.

 

For the applicant’s convenience, the requirements for a special‑form drawing are as follows.

 

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

 

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

 

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

 

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

 

(5)  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.

 

(6)  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.

 

D.                Requirements for 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.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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

 

                                                                        Regards,

 

 

 

/Scott M. Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 x117 (Telephone)

(703) 746-8108 (Fax - Official Responses Only)

 

 

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.