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  76/469085

 

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

 

Search for Conflicting Marks

 

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 recitation of services is unacceptable as indefinite because it contains vague terms and items classified in several International Classes.  TMEP §1402.11.  The applicant may adopt the following recitation, if accurate (required changes in bold): 

 

“[BASED ON ITU] jewelry boxes of metal,” in International Class 006;

 

“[BASED ON ITU] perfumes, toilet water, personal deodorants, essential oils for personal use, body lotions, shower gel, bubble bath, bath oils, bath pearls, skin soaps, shaving balms, shaving cream, aftershave lotions, cosmetic pencils, foundation make-up, face powders, talcum powder, eyeshadows, rouges, lipsticks, mascaras, skin cleansing creams, skin cleansing lotions, sun screen preparation, nail polish, beauty masks, facial scrubs, face creams, body creams, hair shampoos, hair sprays, hair lotions, dentifrices,” in International Class 003;

 

“[BASED ON 44D] candles, tapers, tallows and oil lamp wicks,” in International Class 004;

 

“[BASED ON ITU] earrings, jewelry bracelets, necklaces, rings being jewelry, pendants, brooches, jewelry chains, medallions, cufflinks, tie clips; watch bands; jewelry, imitation jewelry <see below>, jewel cases jewelry boxes of precious metal, watch cases, wrist watches, clocks, chronometers; [BASED ON USE] imitation jewelry <see below>,” in International Class 014;

 

“[BASED ON ITU] writing paper, envelopes, occasion cards, blank cards, posters, cardboard boxes, calendars, exercise books, pen cases, paper bags, paper table cloth, paper napkins, paper mats, paper towels, passport holders, paper coasters,” in International Class 016;

 

“[BASED ON USE] handbags, shoulder bags, beach bags, clutch bags, all purpose sports bags, attaché cases, shopping bags, travelling bags, business and credit card cases, document cases, passport cases, vanity cases sold empty not fitted, keycases, school knapsacks, rucksacks, briefcases, purses, wallets, travelling trunks, suitcases, umbrellas, parasols, walking sticks,” in International Class 018;

 

“[BASED ON ITU] furniture and furniture mirrors, cushions, pillow, mattresses, trays not of metal <see below>, mannequins, non-metal key holders, jewelry boxes not of metal,” in International Class 020;

 

“[BASED ON ITU] empty perfume atomizers, cosmetic brushes, hair brushes, hair combs, household sponges, powder puffs, casseroles, cruets not of precious metals for oil and vinegar, pepper grinders, non-electric griddles, kitchen ladles, lemon squeezers, salt and pepper shakers, bowls, pots, vases, covers for dishes and pots, napkin holders, toothpick holders, non-electric kettles, metal cooking pans, plates, serving platters, saucepans, saucers, soup tureens, serving trays not of precious metals; cups, jugs, mugs, drinking glasses, non-metal decorative boxes and plates, flower pots, glass, stained glass, earthenware, crystal <see below>,” in International Class 021;

 

“[BASED ON ITU] yarn, angora yarn, chenille yarn, cotton yarn, cotton thread, elastic yarn, elastic thread, knitting yarn, linen yarn, linen thread, rayon yarn, rayon thread, sewing yarn, sewing thread, silk yarn, silk thread, synthetic yarn, synthetic thread, wool yarn, thread for textile use, spun cotton, spun silk, spun wool; worsted thread,” in International Class 023;

 

“[BASED ON USE] fabric for the manufacture of clothing articles, brocade, damask, flannel, fustian, taffeta, tulle, velvet, knitted fabrics for use in making clothing articles, silk fabrics, woolen fabrics, linen fabrics, hemp fabrics, mixed yarn fabrics for use in making <specify>, cotton fabrics, curtains, textile wall hangings, shower curtains, towels, bath linen, fabric table runners, cloth coasters, napkins, textile place mats, dish mats and carafe mats, table covers not of paper, table linen, quilts, bed covers, bed linen, dishcloths, fabric handkerchiefs, oven mitts, mosquito nets,” in International Class 024;

 

“[BASED ON USE] brassieres, corsets, singlets, petticoats, nightgowns, pajamas, dressing gowns, pullovers, bath robes, bathing suits, gloves, cardigans, jerseys, neckties, neckerchiefs, scarves, sweaters, socks, stockings, tights, trousers, leggings, skirts, jackets, jerkins, shirts, vests, waistcoats, jumpers, track suits, blouses, jeans, panties, underpants, bermuda shorts, T-shirts, sweat-shirts, suits and dresses, overcoats, anoraks, coats, raincoats, belts, suspenders, shoes, boots, slippers, hats, caps,” in International Class 025;

 

“[BASED ON USE] carpets, carpet padding, carpet underlining, plastic wall coverings, resilient hard surface coverings for floors, linoleum for use on floors, cork mats, door mats, gymnasium exercise mats, plastic bath mats, reed mats, rubber mats, straw mats, anti-static mats for non-safety use; rugs, wall hangings, not of textile; carpet tiles; wallpaper, floor mats for vehicles,” in International Class 027.

 

Because the applicant is seeking registration under different filing bases for different goods, the entire identification should be re-typed for processing purposes.  Please provide the bracketed clarifications in the body of the identifications as shown above so that the Office may correctly separate the goods based upon the filing basis.  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 the goods recited in the present identification.

 

In addition, the applicant asserts use of the mark in commerce for imitation jewelry and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods.  An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).  The applicant must delete the goods from one basis. 

 

Also, when an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification.  In this case, however, the examining attorney cannot determine the nature of the following because there is insufficient information in the record.  The applicant must provide additional details as to the nature of these items to ensure proper classification: 

 

1.                  trays not of metal

2.            glass, stained glass, earthenware, crystal

 

The applicant should also note that depending on its response, additional International Classes of goods other than those specified above may be required.

 

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, i.e., 11 classes, 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). 

 

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 in each class and list the goods 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 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).

 

Filing Basis

 

The applicant has filed asserting use in commerce under Trademark Act Sections 1(a) and 1(b), 15 U.S.C. §1051(a) and (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 use 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.  If the applicant wishes to proceed relying on use 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). 

 

Ownership of Prior Registrations

 

If the applicant is the owner of Registration Nos. 2476921, 2414930, 2185816, 1724884 and others, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Michael Keating/

Trademark Attorney

Law Office 113

(703) 308-9113 x232

(703) 746-8113  (fax)

ecom113@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.