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

 

This letter responds to the applicant’s communication filed on January 29, 2004 in which the applicant provided a properly ratified response in which he amended the identifications of goods.  The amended identification of goods remains unacceptable as indefinite and too broad.  Moreover, the examining attorney notes that the applicant has not addressed the specimen issue, the drawing issue, nor the request for additional information, as required in the first office action.

 

 As a result, the requirement of acceptable identifications of goods, the specimen requirement, the drawing requirement and the information requirement are each maintained and made FINAL.

 

Identification of Goods Indefinite – FINAL

The identification of goods remains unacceptable as indefinite.  Accordingly, the applicant must amend the wording of the identification of goods as indicated.  TMEP section 1402.

 

Automobile parts (cv CV joints) – the nature of the goods is not sufficiently specified – the applicant must amend the application to clearly and specifically identify the nature of the goods.  Moreover, the identification of goods is unacceptable as indefinite because it contains terms within parentheses and because it recites services that are completely unrelated and not likely to be performed by one individual.  Although parentheses are used in the Office ID Manual for purposes of searching, the use of parentheses in the actual recitation is unacceptable.  The applicant must remove the parentheses from the recitation and state the services in common English.

 

Telescope parts and whole telescopes – the nature of the goods is not sufficiently specified – the applicant must amend the application to clearly and specifically identify the nature of the goods.  h, e.g., “^.”

 

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

 

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

 

-         Automobile parts, namely, CV joints, 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.

 

Specimen of Temporary Nature – FINAL

Applicant must submit a specimen of a more permanent nature.  The originally submitted specimen appears to be temporary in nature because it is merely a hand-printed label on a computer disk.  37 C.F.R. §2.61(b); TMEP §904.04(a).   

 

The applicant must submit a specimen showing use of the mark for the goods specified.  37 C.F.R. Section 2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.    The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20.  

 

Drawing Not in Typed Form – FINAL

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 – FINAL

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).

 

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). 

xamples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

 

 

 

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

 

 

 

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.