Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/487954

 

 

On October 24, 2003, action on this application was suspended pending the disposition of the Applicant’s Cancellation petitions against U.S. Registration Nos. 1081467 and 1523104,  which registrations had been cited as Section 2(d) bars to the registration of the subject mark.

 

A routine status check of the Trademark Office records has disclosed that both U.S. Registration Nos. 1081467 and 1523104 were cancelled, in total, pursuant to Trademark Act Section 18 on May 12, 2005.  Accordingly, this application is removed from suspended status.

 

Section 2(d) Refusal of Registration is WITHDRAWN

 

The Section 2(d) refusal of registration in view of now cancelled U.S. Registration Nos. 1081467 and 1523104 is WITHDRAWN. 

Requirements for Amendment to Identification and Classification of Goods and for Compliance with Multiple Class Application Requirements are Continued and Made FINAL

 

The requirements for the submission by the applicant of an amended acceptable statement of goods, for the proper classification of the goods, and for applicant’s compliance with the Multiple Class application rules are continued and made FINAL.

 

In the identification of goods and/or services, the applicant must use the common commercial names for the goods and/or services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  TMEP §§1402.01 and 1402.03(a).  In addition, before a mark may be allowed for publication, the goods and service s in association with which registration is sought must be properly classified. TMEP Section 1401.

 

As the examiner noted in the first Office Action issued in this matter, the identification of goods set forth in the application as filed is not acceptable because it does not make clear whether or not the goods are medicated.  In addition, the broadly identified goods encompass goods that may fall in more than one International Class.  Amendment to the statement of the goods, and to the classification of the same, if applicable, is therefore required.

 

For example, the applicant may adopt either or both of the following suggested amended statements of goods, and the corresponding classifications of the same, if accurate:

 

SUN TANNING PREPARATIONS; SUN BLOCK AND SUN SCREEN PREPARATIONS; NON-MEDICATED SKIN MOISTURIZING LOTIONS in International Class 3;

 

MEDICATED AFTER-SUN SKIN CARE PREPARATIONS FOR USE IN MOISTURIZING AND TREATING SUNBURNED SKIN in International Class 5.

 

The applicant is reminded that the Trademark Office Manual of Acceptable Identifications of Goods and Services, which includes the correct classifications of the listed goods and services, may be found online at http://www.uspto.gov.  The applicant may find this resource to be quite useful in framing an amended and acceptable identification of goods/services in this matter. The applicant should bear in mind that brackets and parentheses shown in the identification manual are in the nature of directional signals, the significance of which is explained in the introduction to the Identification Manual.  Parentheses and brackets should not be included in the actual identification of goods or recitation of services adopted by the applicant. 

 

Please 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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.  In addition, once an item has been deleted from an identification of goods or recitation of services, it normally cannot be reinserted.

 

The requirement for an acceptable statement of goods, and for the proper classification of the same, is Continued and is now made FINAL.

 

Multiple Class Application Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

The requirement for compliance with the multiple class application rules, if applicable, is Continued and is now made FINAL.

 

Proper Response to FINAL Office Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Barbara A. Loughran/

Trademark Examining Attorney

Law Office 104

(571) 272-9189

email: barbara.loughran@uspto.gov

 

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

 

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).

 

• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.