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  76/478520

 

            This letter responds to the applicant's communication filed on July 11, 2003.

 

 

I.  SIGNIFICANCE OF THE MARK:

 

            The applicant’s statement regarding the significance of the mark is accepted and will be entered into the record.

 

            However, the applicant is advised of the following FINAL refusal.

 

 

II.  IDENTIFICATION OF GOODS REQUIREMENT MADE FINAL:

 

            Generally, the examining attorney may require an amendment of the identification language, if appropriate, to accurately describe the goods or services (see TMEP §§804.09 and 804.10).  Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 USPQ 105 (C.C.P.A. 1956) (requirement to amend "internal combustion engines for industrial use" to "outboard motors" considered proper); In re Opryland USA Inc., 1 USPQ2d 1409, 1410 (TTAB 1986) (noting that specimens evidenced use of the mark for "television broadcasting services" and/or "cable television transmission services" instead of "television production services"); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972) (noting that, in view of specimens, greater specificity should have been required in identifying registrant's detergent product.,); In re Toro Mfg. Corp. 74 USPQ 241 (TTAB 1972) (noting that use on specialized article known as "grass-catcher bags for lawn-mowers" did not justify the broad identification, "bags," which would encompass goods diverse from and commercially unrelated to applicant's specialized article); Ex parte Consulting Engineer Publishing Co., 115 USPQ 240 (Comm'r Pats. 1957) (amendment of "periodical" to "monthly news bulletin" required);  Merchandising Promotions v. Hastings & Co., Inc., 110 USPQ 256 (Comm'r Pats. 1956) (amendment of "gold stamping foil" to "cellophane folders with pressure-sensitive gold foil strip attached for personalizing articles" required).

 

            In the initial Office Action, the examining attorney required the applicant to amend the identification of goods since the proposed identification of goods was indefinite.  However, the applicant’s amendment to its identification of goods, namely the “fruit bars dusted with chili powder”, in its Response is still indefinite.  The goods are properly classified in International Class 29 rather than International Class 30.  Since the applicant failed to submit an acceptable amendment to its identification of goods, the examining attorney makes FINAL the identification of goods requirement.

 

            The applicant is urged to submit an amended identification of goods as follows:

 

“Fruit-based bars dusted with chili powder” in International Class 29 and/or

 

 “Sugar; tapioca; preparations made from cereals, namely flour; ices; honey; treacle; yeast; baking powder; chili sauces; chili spices; confectionery; namely candies, chocolates, bubble gum, cookies, ice creams, gummy candies, nut candies, milk candies, caramels, chewy candies, lollipops, mints, coconut candies, cakes, cocoa, marshmallows, frozen confections, pastry, candies with chili” in International Class 30.  TMEP §1402.01.

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

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 goods set forth in the present identification.

 

COMBINED APPLICATION:

 

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/services in each class and list the goods/services 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/services 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.  The fee for filing a trademark application is $325 for each class.

 

(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).

 

 

III.  RESPONSES TO A FINAL REFUSAL:

 

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). 

 

 

 

/ROBERT L. LORENZO/

Robert L. Lorenzo

Trademark Attorney

Law Office 111

(703) 308-9111 x 117

Robert.Lorenzo@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.