UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/502587
APPLICANT: Westerfield, James
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CORRESPONDENT ADDRESS: PAUL M. DENK, ESQ. 763 S NEW BALLAS RD SAINT LOUIS MO 63141-8704
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: SISTER JULIE'S WINTERGREEN MINT
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/502587
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
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.
However, the applicant must address the following informalities.
Identification of Goods
The mark includes the wording “MINT.” If an applicant uses the mark on goods other than mint plants, the use would be deceptive or deceptively misdescriptive. Therefore, the applicant must amend the identification of goods by limiting it to the following:
“Live plants, namely, mint plants,” in International Class 31.
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 that are not within the scope of goods set forth in the present identification.
Disclaimer:
The applicant must disclaim the descriptive wording “WINTERGREEN MINT” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it indicates a feature of the applicant's goods. As such, the applicant must insert a disclaimer of “WINTERGREEN MINT” in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use WINTERGREEN MINT apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Claim of Ownership
If the applicant is the owner of Registration No. 2425643, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
/George M Lorenzo/
Examining Attorney
Law Office 110
Phone: (703) 308-9110, ext 143
Fax: (703) 746-8110
E-mail: ECOM110@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.