UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/482762
APPLICANT: J&F DESIGN, INC
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CORRESPONDENT ADDRESS: J&F DESIGN, INC 5578 BANDINI BLVD BELL CA 90201-6404
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: SARU SARU WORLD
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/482762
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.
The applicant asserts use of the mark in commerce asserts that it has a bona fide intent to use the mark in commerce for the same goods. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), for the same goods or services. 37 C.F.R. Section 2.34(b)(1). The applicant must delete one basis or divide the goods/services between the two bases, as appropriate. See 37 C.F.R. Section 2.87 regarding dividing an application.
If applicant is asserting 1(a) as a basis for registration the applicant must include a specimen showing use of the mark in commerce on or in connection with the goods. TMEP §904. The application does not contain a specimen. The applicant must submit a specimen, and must submit the following statement:
The specimen was in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
The application lists more than one party as the applicant. Usually a mark is owned by a single business entity or one individual. If the applicants own the mark jointly, they must state that they are joint applicants and explain the nature of their business relationship. TMEP §803.03(d). The applicant cannot amend the application to designate another entity as the applicant. If the application was filed in the name of the wrong party, the application is void. The true owner may file a new application, with a filing fee. TMEP §803.06.
One of the parties identified as applicant is a corporation. This party must indicate its state of incorporation. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.
The applicant must indicate whether the term “saru” has any significance in the relevant trade, any translation from a foreign language, any geographical significance or any meaning in a foreign language. 37 C.F.R. Section 2.61(b).
The identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial names of the goods. If there is no common commercial name, the applicant must describe the product and its intended uses. TMEP section 804. The applicant may access the Office’s Acceptable Identification of Goods and Services Manual at: http://www.gov.uspto.report/web/offices/TAC/doc/gsmanual.
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(a); TMEP section 1402.01. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
The applicant may adopt the following identification, if accurate:
Class 16: Stickers; stationery; books, namely, (identify type of book or subject matter of book, e.g., note books, children’ books, comic books, story books, etc.);
Class 25: Shirts, pants, jeans, socks, jackets, underwear, pajamas
Class 28: Toys, namely, (identify type of toy, e.g., mechanical action toys, inflatable bath toys, plush toys, stuffed toys, ride-on toys, musical toys, etc.)
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/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).
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must 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(a); 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.
The description of the mark that applicant submitted (“DESIGN IMAGE”) does not appear to accurately describe the mark it seeks to register (SARU SARU WORLD & design). The applicant must submit a concise description of the mark. 37 C.F.R. Section 2.37; TMEP section 808 et seq. The statement may be in the following form:
The mark consists of the words SARU SARU WORLD inside a black rectangular background design.
Please submit all email communications to ecom108@uspto.gov unless otherwise instructed by the Examining Attorney.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Russ Herman/
Attorney
Law Office 108
(703) 308-9108 (214)
(703) 746-8108 (fax)
ecom108@uspto.gov
russ.herman@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.