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  76/487956

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

 

Potential Likelihood of Confusion

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/090915.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.

 

Action on this application will be suspended pending the disposition of Application Serial No(s). 78/090915, upon receipt of the applicant’s response resolving the following informalities:

 

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite.  TMEP §1402.11.  In the recitation, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  In addition, the applicant must refrain from using quotation marks, parentheses and brackets.  TMEP §§1402.03(a) and 1402.11.  The applicant may adopt the following recitation, if accurate:

 

Class 35 – Consultation and research services in the field of marketing; creating trademarks for others.

 

Class 42 – Trademark consultation and technical evaluation.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, 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 recitation, additions to the recitation are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services as originally recited in the application.

 

 

Multiple Class Application

 

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.  

 

 

Application Pursuant to Sections 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).

 

 

Informational

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration 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 is $335.00 per class for classes added on or after January 1, 2003.

 

Whether applicant chooses to respond via regular mail or electronic mail, applicant should submit its response using only one of these means of communication.  Duplicate responses will delay the prosecution of the application.

 

Customers can electronically change the correspondence address on any trademark/service mark application or registration that is currently active with the Office by using the web-based TEAS (Trademark Electronic Application System) form.  For further information, visit http://www.gov.uspto.report/web/trademarks/tmchangeaddress.htm.

 

The following authorities govern the processing of trademark applications:  The Trademark Act, 15 U.S.C. §§1051 et seq.; Trademark Rules of Practice, 37 C.F.R. Part 2; Trademark Manual of Examining Procedure (TMEP), 3^rd edition, January 2002.  To access these resources, please visit http://www.gov.uspto.report/web/offices/tac.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday.

 

 

 

/Matthew J. Pappas/

Trademark Attorney

Law Office 105

703/308-9105 ext. 206

matthew.pappas@uspto.gov (informal)

 

 

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.