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  76/506907

 

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

 

NO CONFLICTING MARKS NOTED

 

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 1105.01.

 

UNACCEPTABLE IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The application lists the goods “corrugated or cardboard boxes for containing medical waste” and classifies such goods in International Class 16. The wording in the identification of goods is unacceptable as indefinite. TMEP section 1402.01.  Further, the goods have been misclassified.  To follow is the examining attorney’s suggestion concerning the applicant’s identification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestion, if accurate:

 

“Containers for medical waste, namely corrugated or cardboard boxes for containing medical waste” in International Class 10.

 

If the applicant has access to the world wide web, it is strongly recommended that it review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

APPLICANT MAY NOT EXCEED SCOPE OF PRESENT IDENTIFICATION OF GOODS

 

While an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

 

UNACCEPTABLE SPECIMEN

 

The specimen does not show use of the mark for any services identified in the application, as it appears to consist of one (1) sheets of white paper with an enlarged copy of the mark in the center of the sheet.  The applicant must submit ONE (1) specimen showing use of the mark for the goods specified.  37 C.F.R. Section 2.56.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq. 

 

FEE INCREASE EFFECTIVE JANUARY 1, 2003 (FOR INFORMATION ONLY)

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

 

ELECTRONIC RESPONSES (FOR INFORMATION ONLY)

If the applicant chooses to send an official response to this Office action via e-mail (to ecom108@uspto.gov), the applicant is advised that the response must:

 

(1)   be in English;

 

(2)   include the entire response as e-mail text, not as an attachment;

 

(3)   list the serial number in the "Subject" line; and

 

(4)   include any specimens or evidence in jpg or gif format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format. Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted.

 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/. (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised. Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

CHANGE OF ADDRESS FOR MAILING TRADEMARK CORRESPONDENCE (FOR INFORMATION ONLY)

 

To expedite processing, the Office encourages parties to file documents through the Trademark Electronic Application System, at http://www.gov.uspto.report/teas/index.html, wherever possible. 

 

Effective May 1, 2003, the mailing addresses for filing trademark-related documents on paper has changed.  See notices at 68 FR 19371 (April 21, 2003) and 68 FR 14332 (March 25, 2003). 

 

All trademark-related correspondence filed by mail, except for documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:

 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, Virginia  22202-3514

 

The mail box designations previously listed in TMEP §305.01 are no longer in use.

 

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/.  Paper documents and cover sheets to be recorded in the Assignment Services Division should be sent to:

 

Mail Stop Assignment Recordation Services

Director of the United States Patent and Trademark Office

P. O. Box 1450

Alexandria VA  22313-1450

 

Copies of trademark documents can be ordered through the Office’s website at http://www.uspto.gov.  Requests for certified or uncertified copies of trademark documents filed on paper should be sent, with an authorization to charge the fee to a credit card or USPTO deposit account, to: 

 

Mail Stop Document Services

Director of the United States Patent and Trademark Office

P. O. Box 1450, Alexandria VA  22313-1450

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

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

 

Sonya B. Stephens

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 227 (phone)

(703) 746-8108 (fax)

ecom108@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

 

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