Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/464559

 

The applicant has petitioned the Director to amend its basis from §1(b) to §44(e) after publication, pursuant to 37 C.F.R. §2.35(b)(2).  See TMEP section 806.03(j).  In its petition, the applicant has indicated that it wishes to delete the §1(b) basis and substitute §44(e) therefor.  The Office has granted the applicant’s petition and the notice of allowance has been cancelled.  The application has been assigned to the examining attorney for examination of the §44 basis.  The examining attorney has reviewed the applicant’s §44 basis and determined the following.

 

PARTICULAR WORDING IS BEYOND SCOPE OF FOREIGN REGISTRATION

 

The following wording in the identification of goods in the application is unacceptable because it exceeds the scope of the goods in the foreign application or registration:  “computer software used therewith, to enable the gaming machine to run.”  37 C.F.R. §§2.32(a)(6) and 2.34(b). 

 

The applicant must therefore do one of the following:

 

(1)   delete the Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and substitute a basis under Trademark Act Sections 1(a) or 1(b) for those goods and/or services; or

 

(2)   amend the identification of goods and/or services in the application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the application. 

 

15 U.S.C. §§1051(a) or (b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972).  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.

 

An applicant may assert more than one basis in an application, provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §§806.02 et seq.

 

If applicant chooses to assert different bases in the same application, then applicant must clearly state that it is claiming more than one basis, and must separately list each basis, followed by the goods and/or services to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 109

(571) 272-9352 phone

(571) 273-9109 fax*

*fax no. for official responses only

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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