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  76/466132

 

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

 

Search Results

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.

 

Identification of Goods

The wording “[d]istinguishing a unique style and design” in identification of goods is unacceptable because it is merely informational and should not be included in the identification.  Further, the wording “clothing” and “headgear” are unacceptable as indefinite because they do not specify the items upon which the mark is used.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses.  However, the applicant may amend this wording to the following, if accurate:

 

“Clothing, namely, [specify items, e.g., shirts and pants]; footwear; and headgear, namely, [specify type, e.g., hats, caps],” in International Class 25.  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.

 

Disclaimers

The applicant must disclaim all wording in the mark because it is merely descriptive and geographically descriptive of the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it indicates a feature of the applicant’s goods.  In addition, the wording “MILWAUKEE” is primarily geographically descriptive because it is a geographic place, and the goods come from the geographical place named in the mark.  Further, the use of the term “CO.” must be disclaimed because it merely indicates the nature of the applicant’s entity and is not a source indicator.   See In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); In re Martin’s Famous Pastry Shoppe, Inc., 221 USPQ 364 (TTAB 1984) aff’d on other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); TMEP §1213.03(d).

 

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 “AUTHENTIC QUALITY” and “MILWAUKEE MOTORCYCLE CLOTHING CO.” apart from the mark as shown.

 

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

 

Drawing

The amended drawing filed on February 10, 2003, is not acceptable because it will not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

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. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

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.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Specimen

The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark for any goods identified in the application.  The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

Claim of Ownership

If the applicant is the owner of Registration No. 2657586, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

 

 

 

 

 

/George M Lorenzo/

Examining Attorney

Law Office 110

Phone: (703) 308-9110, ext 143

Fax: (703) 746-8110

E-mail: 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

 

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