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  76/496802

 

The examining attorney has carefully reviewed the applicant’s response to the first Office action containing amendments and arguments in favor of registration.  The description and amended drawing are acceptable and have been entered into the record.  As stated in the previous action, the “Possible Ornamentation Refusal Warning,” was simply a warning regarding acceptable use when specimens are submitted and is maintained.  As to the other outstanding issues, the examining attorney has determined the following.

 

Requirement of Amended Identification Maintained

 

As stated in the previous Office action, some of the wording used as the identification of goods is unacceptable as too broad.  The requirement of a clarified identification of goods is maintained and made FINAL. 

 

The applicant may amend the wording to:

 

            Jewelry boxes in Class 14.

-and/or-

            Non-metal utility boxes in Class 20.

-and/or-

Fabric used in the manufacture of jewelry boxes and utility boxes in International Class 24.  TMEP section 1301.05.

 

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 that are not within the scope of the goods recited in the present identification.  For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, (if the applicant elects to adopt the above identification, this issue may be resolved by telephone) or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(703) 308-9108 Ext. 247

(703) 746-8108 (Fax)

(703) 305-8747 (Status)

 

 

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 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.