Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/495176

 

The following issues were discussed in communication with Leslie Mitchell on May 21, 2003.

 

 

IDENTIFICATION OF GOODS:

 

Some of the wording used by the applicant in the identification of goods is unacceptable as indefinite because the nature of the goods is not clear.  Specifically, the applicant must specify the common commercial name of the preparations made from cereals, confectionery and sweets.  The applicant also lists ice and ices.  The applicant must also specify what “gummies” are. 

Finally, the applicant is advised that “cacao” is defined as “an evergreen tropical American tree (Theobroma cacao) having leathery, ellipsoid, ten-ribbed fruits borne on the trunks and older branches. Also called chocolate tree” or “the seed of this plant, used in making chocolate, cocoa, and cocoa butter. In this sense, also called cacao bean, cocoa bean.”.[1]

 

The applicant may adopt the following identification, if accurate: 

 

“Cacao butter for food purposes; processed cacao beans for food purposes” in International Class 29;

 

“Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; preparations made from  cereals, namely, flour; bread, pastry; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces; spices; confectionery, namely, candies, chocolates, bubble gum; cookies, ice creams, gummy candies, nut candies, biscuits, milk candy, caramels, chewy candy, lollipops, mints, sweets, ,namely, ___________________________, coconut candies, cakes, cocoa, marshmallows, pastry, frozen confections, candy with chili” in International Class 30 and/or

 

“Cacao seeds; live cacao plants” in International Class 31.  TMEP §1402.01.

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

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 the goods and services recited in the present identification.

 

 

COMBINED 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.  

 

 

SIGNIFICANCE OF WORDING:

 

The applicant must indicate whether the wording “SKWINKLES” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

                                                                         ____________________________

Robert L. Lorenzo

Trademark Attorney

Law Office 111

(703) 308-9111 x 117

Robert.Lorenzo@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