Offc Action Outgoing

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  76/472973

 

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

 

•            Search of Office records.

The examining attorney has searched the Office records and has found no similar registered or pending mark which bars registration under Trademark Act §2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

However, the applicant must respond to the following.

 

1.         Identification of goods/services.

The identification of goods/services is unacceptable as indefinite.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

retail store services, mail-order services and internet order services, all featuring [indicate specific field, e.g., magazines, clothing, jewelry]

This Office’s Acceptable Identification of Goods & Services Manual is accessible at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/manual.html (searchable using Ctrl+F).  The applicant should also 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/services that are not within the scope of the goods/services set forth in the present identification.

 

2.         Disclaimer.

The applicant must, as shown below, disclaim the descriptive wording “PROFESSIONAL HORSEMAN'S SUPPLY” apart from the mark. Trademark Act § 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the applicant’s services––stores that supply professional horsemen.  See Appendix hereto.

The computerized printing format for the Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use “PROFESSIONAL HORSEMAN'S SUPPLY” apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

3.        Request for information.

In order to allow for proper examination of this application, including the final determination as to whether wording in the mark is merely descriptive (or deceptively misdescriptive) in relation to the applicant’s goods or services, the applicant must submit samples of advertisements or promotional materials for the goods or services or, if unavailable, for goods or services of the same type.  If such materials are not available, the applicant must describe the nature, purpose, and channels of trade of the goods or services identified in the application.

In addition, the applicant must answer the following question(s) for the record:

Does the applicant supply any professional horsemen?

Does the wording “professional horseman’s supply” have any significance in the applicant’s industry or as applied to the applicant’s goods or services?

See 37 C.F.R. §2.61(b).  See also In re DTI Partnership, L.L.P., 2003 TTAB-LEXIS 171 (2003) (“Applicant’s failure to comply with the Trademark Rule 2.61(b) requirement is a sufficient basis, in itself, for affirming the refusal to register applicant’s mark”).

 

4.         Drawing.

The drawing is not acceptable because it will not reproduce satisfactorily (due to gray shading).  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 requirements for a special‑form drawing are as follows:

(a) The drawing must appear in black and white; no color is permitted.

(b) Every line and letter must be black and clear.

(c) The use of gray to indicate shading is unacceptable.

(d) The lining must not be too fine or too close together.

(e) The preferred size of the area in which the mark is displayed is 2½" (6.1 cm) high and 2½" (6.1 cm) wide.  It should not be larger than 4" (10.3 cm) high or 4" (10.3 cm) wide.

(f)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

37 C.F.R. §2.52; TMEP §§807.01(b), 807.07(a).  The Office enforces these drawing requirements strictly. 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½" (20.3 to 21.6 cm) wide and 11" (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 §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 §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).

 

•           Responding to this Office Action.

To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.

To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page. 

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.  For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.

Notice of Fee Increase:  Effective January 1, 2003, the fee for filing an application for trademark registration will be increased $10.00 to $335.00 per International Class.  The USPTO will not accord a filing date to applications 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.

/J. Brendan Regan/

Examining Attorney, Law Office 113

(703) 308-9113x420 • brendan.regan@uspto.gov

  

 

                                                    APPENDIX TO OFFICE ACTION

Mark
        HORSEMEN'S GENERAL STORE
Goods and Services
        IC 035. US 100 101 102. G & S: retail store and mail order catalog services for equestrian equipment, clothing and supplies. FIRST USE: 19860900. FIRST USE IN COMMERCE: 19860900
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75273730
Filing Date
        April 14, 1997
Publication for Opposition Date
        June 1, 1999
Registration Number
        2271365
Registration Date
        August 24, 1999
Owner Name and Address
        (REGISTRANT) Active Leisure, Inc. CORPORATION OHIO 7047 Shooters Hill Road Toledo OHIO 43617
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "GENERAL STORE" APART FROM THE MARK AS SHOWN
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL-2(F)
Live Dead Indicator
        LIVE
Attorney of Record
        LYMAN F SPITZER