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  76/484218

 

General Search Clause

 

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.

More than one Applicant - Partnership

 

The application lists more than one party as the applicant.  It appears, however, that the applicant is a partnership.  If so, the application must be amended to identify the applicant as follows: “__________, a partnership organized under the laws of ______________, composed of __________.”  TMEP §803.03(b).  The applicant must list all general partners and their national citizenship or state or country of organization or incorporation, as appropriate.  37 C.F.R. §2.32(a)(3)(iii); TMEP §803.04.

 

If however, the applicants do not conduct business as a partnership but own the mark jointly as individuals they must state that they are joint applicants and explain the nature of their business relationship.  TMEP §803.03(d).  If the applicant’s own the mark jointly as “joint applicants”, both parties must sign the declaration and all papers in connection with prosecuting the application. 

 

Cannot Assert 1(a) and 1(b) for the Same Goods or Services

 

The applicant asserts use of the mark in commerce and 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.  37 C.F.R. Section 2.34(b)(1).  The applicant must delete one basis or divide the goods between the two bases, as appropriate.  See 37 C.F.R. Section 2.87 regarding dividing an application.

Requirements for an Application Based on 1(a): Use In Commerce

 

If applicant intends to base its registration on Section 1(a) of the Trademark Act the applicant must submit the following:

 

(1)  A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;

 

(2)  The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;

 

(3)  The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and

 

(4)  One specimen for each class, showing how the applicant actually uses the mark in commerce.  If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date.

 

These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

Specimen (Advertising Material) Not Acceptable to Show Use on Goods – Use Application

 

If applicant intends to base its registration on Section 1(a) of the Act, the specimens submitted are unacceptable as evidence of actual trademark use because they comprise a business card and an invoice/order form and do not support use of the mark in connection with goods.  Business cards, invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a substitute specimen showing the mark as it is used in commerce in connection with the goods identified.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §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. §2.59(a); TMEP §904.09.

Identification of Goods Amendment Required

 

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 7:  Foundry equipment, namely, ceramic crucibles for melting and pouring molten metals

 

Please submit all email communications to ecom108@uspto.gov unless otherwise instructed by the Examining Attorney.

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

Applicant May Wish to Seek Trademark Counsel

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

List Pertinent Information on Response

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.

 

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) 684-4793

(703) 746-8108 (fax)

ecom108@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.