UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/486364
APPLICANT: 608941 Ontario Limited
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CORRESPONDENT ADDRESS: MICHELE P. SCHWARTZ HUGHES & LUCE, LLP 1717 MAIN STREET SUITE 2800 DALLAS, TEXAS 75201 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
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MARK: LIGHTING ALTERNATIVES
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CORRESPONDENT’S REFERENCE/DOCKET NO: 13030.41
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 76/486364
Mark: LIGHTING ALTERNATIVES
The assigned examining attorney has reviewed the referenced application and determined the following:
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.
Disclaimer
The applicant must insert a disclaimer of the descriptive wording “lighting” in the application. Trademark Act § 6, 15 U.S.C. § 1056; TMEP §§ 1213 and 1213.08(a)(i). The applicant’s goods and services are both related to “lighting” fixtures. See definition(s) below. A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “LIGHTING” apart from the mark as shown.
light·ing
light·ing (lì¹tîng) noun
1. The state of being lighted; illumination.
2. a. The method or equipment used to provide artificial illumination. b. The illumination so provided.
3. The act or process of igniting.[1]
Identification of Goods and Services
The identification of goods and services is unacceptable as indefinite. TMEP § 1401.01. In Class 11, the applicant must specify whether the light fixtures are “electric” or “infrared” or something else. In Class 42, the applicant must specify that the service is provided “for others.”
The applicant may adopt the following identification, if accurate:
Class 11: Electric light fixtures.
Class 42: Designing light fixtures for others.
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 goods and services set forth in the present identification.
If the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant’s country of origin. The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01, 1003.03 and 1004.
If the foreign certificate of registration is not written in English, the applicant must provide an English translation. The translator should sign the translation. See TMEP §§1004.01 and 1004.01(b).
Application Based on §1(b) and §44(d)
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
If the applicant has any questions or needs assistance in responding to this Office Action, please feel free to telephone the assigned examining attorney.
Wendy B. Goodman
/Wendy B. Goodman/
Trademark Attorney
Law Office 103
(703) 308-9103, x409
(703) 746-8103 (fax)
ecom103@uspto.gov
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are 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.
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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.