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  76/466786

 

This letter responds to the applicant’s correspondence filed on October 2, 2003.  The examining attorney accepts the applicant’s recitation of services.

 

Final Disclaimer Requirement

The examining attorney required that the applicant disclaim the term ELISTINGSERVICE.COM.  The applicant has not disclaimed the term.  The requirement to disclaim the term is maintained and made FINAL.

 

The applicant has argued that the entire term “Elistingservice.com Everything Under One Roof” is a unitary expression.  The examining attorney disagrees with the applicant’s contention.  The term “elistingservice.com” is displayed on a different line than the rest of the slogan.  This display creates the impression that the first term is secondary or subordinate to the rest of the proposed mark.  The examining attorney does agree that the second portion of the proposed mark is unitary, “Everything under one roof.”  The entire mark is not unitary.  The applicant must disclaim the descriptive portion of the proposed mark, ELISTINGSERVICE.COM.

 

For the above reasons, the disclaimer requirement is maintained and made FINAL.

 

Response Guidelines

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

 

 

 

/Dawn Feldman Lehker/

Trademark Attorney

United States Patent and Trademark Office

(703) 308-9111 ext. 132

F(703)746-8111

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.

 

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.