UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/505135
APPLICANT: University of Southern California
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CORRESPONDENT ADDRESS: SCOTT A. EDELMAN GIBSON DUNN & CRUTCHER LLP 2029 CENTURY PARK E STE 4000 LOS ANGELES CA 90067-3032
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: FIGUEROA PRESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 93107-00119
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 76/505135
This letter responds to the applicant’s communication filed on March 29, 2004. The applicant (1) submitted a disclaimer of PRESS, (2) maintained the identification of goods as originally filed, (3) argued against the section 2(e)(4) refusal and (4) in the alternative, amended to the Supplemental Register. Nos. 1 and 2 are accepted and made part of the record.
The examining attorney has considered the applicant's arguments regarding the section 2(e)(4) refusal carefully but has found them unpersuasive. Of significance is the applicant’s arguments concerning the geographical significance of FIGUEROA. The applicant argues the significance of FIGUEROA is a famous street name in Los Angeles bording the University of Southern California. The examining attorney disagrees. The alleged significance is of one street, in one city relevant to and in proximity of where the applicant resides. In other words, the geographic location is of an obscure and remote place. Moreover, it is a very common practice to name streets after the surnames of people. Therefore, the examining attorney maintains and continues the section 2(e)(4) refusal.
Upon further review, a new issue has arisen regarding the amendment to the Supplemental Register. The following is advised.
Amendment to the Supplemental Register Not Permitted Until Acceptable Allegation of Use is Filed
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case until an acceptable allegation of use is filed. The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(d); TMEP §815.02, 816.02 and 1102.03.
If applicant files an allegation of use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
/William T. Verhosek/
Examining Atty/LO 114
703-308-9114x142
(Fax) 703-746-8114
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.