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  76/463444

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

UNCLEAR FILING BASIS

 

It is noted that applicant has alleged a bona fide intention to use in commerce, but then refers to Section 1(a) of the Trademark Act.  Intent to use cases fall under Section 1(b) of the Trademark Act.  It is assumed that applicant relies solely upon Section 1(b), intention to use in commerce, because of its submission of the “bona fide intention to use in commerce” statement and because of the lack of any dates of use clause.  Is this correct?

 

The drawing in this case also refers to priority based upon a Canadian trademark application.  Does applicant also rely upon Section 44(d) as a filing basis?  If so, it must submit the serial number of the Canadian application and also supply the date on which it was filed in Canada.

 

ADVISORIES ABOUT SECTION 44

 

Although applicant has a “mailing address” in Canada, he appears to be a resident of Kenya. Thus Canada does not appear to be his country of origin.

 

To obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin.  However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin, i.e., that the applicant has a bona fide and effective industrial or commercial establishment in that country.  Therefore, if the applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, the applicant must provide evidence that Canada is a “country of origin.”  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04. 

 

If the applicant cannot establish that the country in which the foreign application was filed is the applicant’s country of origin, registration under §44(e) will be refused.  The applicant may amend the application to rely on §1(a) or §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  Where an applicant meets the requirements of §44(d) as of the filing date of the United States application, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(c) and (d); TMEP §806.04(b).

 

Please note that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03. 

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

UNACCEPTABLE IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite because it states goods in multiple classes without delineating them by class. The applicant may adopt the following identification, if accurate:  Dispensers for adhesive tapes for stationery or household purposes; and adhesive tapes for stationery or household purposes.  In class 16.  Adhesive tape for industrial and commercial use.  In class 17.  TMEP §1402.01.

 

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.

 

MULTIPLE CLASS REQUIREMENTS

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.  37 C.F.R. §2.6(a)(1). 

 

The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

DOMESTIC REPRESENTATIVE FORM

 

The applicant may designate a domestic representative upon whom notices or process may be served.  Trademark Act Section 1(e), 15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §§604, 811 and 1013.  If the applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the USPTO Director. Trademark Act Section 1(e), 15 U.S.C. §1051(e). The examining attorney provides the following example for the applicant's convenience in preparing an Appointment of Domestic Representative.

 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE

 

 

 

________________________            _________________________

Identify the mark Serial No.

 

 

 

________________________            _________________________

Name of applicant Date of signature

 

 

 

__________________________________________________________________

(Name of domestic representative)

 

 

whose postal address is ________________________________________________

________________________________________________

is hereby designated applicant's representative upon whom notices or process in proceedings affecting the mark may be served.

 

 

 

____________________________

(Signature of applicant)

 

 

 

SEARCH CLAUSE

 

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.

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Steven Foster/ Trademark Attorney

Law Office 106

(703) 308-9106 Ext. 123

Fax number for the Law Office: (703) 746-8106

E-mail responses: ecom106@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.

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