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  76/471359

 

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

 

No conflicting marks found

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.

 

However, the applicant must respond to the following issues:

 

Identification of Goods Indefinite and Too Broad

The identification of goods is unacceptable as indefinite and too broad because the nature of the various goods is not sufficiently specified.  Moreover, the applicant’s identification indicates goods that are classified in more than one class.  The applicant must either restrict the identification to goods in one class or add a class/es to the application.  Accordingly, the applicant must amend the wording of the identification of goods as indicated.  TMEP section 1402.

 

The applicant may wish to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual includes explanations and notices of classification policy.

 

The applicant may amend the wording to the following identification, if accurate:

 

-         Optical glass lenses, in International Class 9.

-         Telescopes and parts therefor, namely, ___ [specify nature of parts, e.g., tripods, lens sights], in International Class 9.

 

-         Structural http://atlas.gov.uspto.report/netacgi/ - h4http://atlas.gov.uspto.report/netacgi/ - h6parts for http://atlas.gov.uspto.report/netacgi/ - h5http://atlas.gov.uspto.report/netacgi/ - h7automobiles, in International Class 12.

-         Automobile parts, namely, ___ [specify nature of goods, e.g., windshields, wheels, engines], in International Class 12.

-         Parts of motorcycles, namely, ___ [specify nature of goods, e.g., handle bars, headlight mounts], in International Class 12.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant is further advised that the sheet submitted on January 6, 2003 is hereby treated as an “amendment” request.  However, the changes and additions requested to the identification of goods are beyond the scope of the identification as originally filed and therefore are not acceptable and will not be entered.  The applicant is restricted to goods within the scope of the original identification, namely, “car parts, motorbike parts, glass lens, telescopes and parts.”

 

Requirements for adding a class

 

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).

 

Specimen is Temporary in Nature

The applicant has submitted a specimen that appears to be temporary in nature (the mark is handwritten on a printing label attached to a computer disk.  The applicant must submit a specimen of a more permanent nature.  37 C.F.R. §2.61(b); TMEP §904.04(a).

 

Drawing Not in Typed Form

It is unclear whether the applicant is applying to register a typed mark, or a stylized mark. 

 

1) If the applicant intended to register a typed-mark form of the term SYNYE, then the applicant must adhere to the following:

 

The requirements for a typed drawing are as follows:

 

The Office prefers that the drawing be typed 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.

 

The mark must be typed entirely in capital letters, without spaces between the letters.

 

37 C.F.R. §2.52; TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

or,

 

2) However, if the applicant intended to register a stylized version of the mark, then the applicant must so indicate for the record.  Please note that if the mark is intended to be stylized, then the use of the mark on the specimen must be a substantially exact copy of the mark. 

 

Request for Additional Information

Applicant is required to furnish such information and exhibits as may be reasonably necessary to the proper examination of this application.  37 C.F.R. Section 2.61(b).  Applicant must furnish the following information:

 

1.                  The applicant must indicate whether the term SYNYE has any significance in the relevant trade, any geographical significance or any meaning in a foreign language.  37 C.F.R. Section 2.61(b).

 

2.                  If the mark is an acronym, then the applicant must provide the full wording for SYNYE.

 

3.                  The applicant must also submit product information for the identified goods.  This may take the form of a fact sheet, an instruction manual, and/or advertisements or promotional materials.  If such materials are not available, the applicant must submit a detailed description of the goods, including but not limited to their nature, purpose, prospective purchasers, and channel of trade. This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 814.  If the applicant does not provide the information required herein, registration may be refused.  See, e.g., In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

 

Fee increase effective January 1, 2003 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.  Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

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

 

 

 

/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.