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  76/470806

 

This letter responds to the applicant’s communication filed on November 1, 2003 in which the applicant 1) amended the recitation of services; 2) provided the required disclaimer; 3) indicated the date the declaration was signed; and 4) indicated that it “will submit a new drawing.  The disclaimer and date of signing of declaration are acceptable and have been made of record.  However, the amended recitation of services remains unacceptable.  As a result, the requirement for an acceptable recitation of services is maintained and made FINAL.  Moreover, since the applicant has not addressed the drawing requirement in the instant response, this issue is also maintained and made FINAL.

 

Recitation of Services Remains Unacceptable – Final Refusal

The wording “- e.g.,” in the amended recitations of services is unacceptable as indefinite because it does not identify the nature of the services with sufficient specificity and renders the services indefinite.  The recitation must be all‑inclusive.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only services that are within the scope of the services recited in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.03(a) and 1402.11.  The applicant must amend the recitation to clearly and specifically identify the nature and field of the services.  TMEP §1402.11. 

 

The applicant may amend the wording to the following recitation of services, if accurate:

                       

-         Construction services, namely, building construction, construction planning and construction drafting, in International Class 37.

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or services set forth in the present identification.

 

Amended Drawing Unacceptable Due To Excessive Gray Shading – Final Refusal

The examining attorney notes that the applicant has not provided a substitute drawing in its response.  As a result, the applicant must note that, as indicated in the first office action, the drawing is not acceptable because it will not reproduce satisfactorily due to the gray shading in the background of the mark.  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 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).

 

These requirements are thus maintained and made FINAL.

 

Options

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). 

 

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

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.