To: | BJC HealthCare (ksgronowski@bjc.org) |
Subject: | TRADEMARK APPLICATION NO. 76459904 - SAFETY STREET - N/A |
Sent: | 3/24/03 6:29:57 PM |
Sent As: | ECom111 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/459904
APPLICANT: BJC HealthCare
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CORRESPONDENT ADDRESS: K. SCOTT GRONOWSKI BJC HEALTHCARE 3015 N BALLAS RD EXECUTIVE OFC SAINT LOUIS MO 63131-2329
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom111@uspto.gov
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MARK: SAFETY STREET
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: ksgronowski@bjc.org |
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 76/459904
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. Section 1052(d). TMEP section 704.02. However, please note the following issues/requirements.
Identification of Goods and Services
The identification of goods and services is unacceptable as indefinite because it is unclear what the goods and services identified in the application are as presented. The applicant may adopt the following identification, if accurate:
Printed instructional, educational, and teaching materials, namely, health and safety training materials used in conjunction with an interactive model for the purpose of teaching children to navigate safely through their neighborhoods to reduce fatalities and injuries related to motor vehicles and other urban experiences that are challenging to young children, in International Class 16;
Educational services, namely, conducting [indicate specific mode of instructions, e.g. classes, seminars, conferences, workshops] in the field of [indicate specific field, e.g. pet care, math, tax preparation] [Applicant may indicate that it is distributing course materials in connection therewith], in International Class 41.
TMEP sections 1402.01 and 1402.11.
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 1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services set forth in the present identification.
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods/services in each class and 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(b); 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.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
The applicant must disclaim the descriptive wording “SAFETY” 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 because it is a feature of the goods/services.
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 “SAFETY” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Further action awaits response to the above.
/Mrs. W. K. H. Price, Esq./
Trademark Attorney
Law Office 111
(703) 308-9111, ext. 426
ecom111@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.