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  76/508353

 

This letter follows the applicant’s May 5, 2004 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.

 

Section 2(e)1 Refusal/Identification of Goods

 

Please note, the applicant’s comments regarding the intended shape of the goods are noted for the record and the Section 2(e)1 refusal is withdrawn. However, the applicant’s comments are not reflected in the identification of goods which reads “edible pet treats” without clarification.

 

The applicant must amend its identification to clarify the shape of the goods. (Please note, the examining attorney may require an amendment of the identification language to accurately describe the goods or services. In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979)).

 

If accurate, the applicant  may consider amending its identification to:

• edible pet treats in the form of pellets or small rings, in class 31.

 

However, the term “breath” is unquestionably descriptive with regard to the goods. As such, it must be disclaimed.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use BREATH apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

Please note, a disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

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.

 

 

 

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(703)308-9113 ext. 286

John.Lincoski@USPTO.GOV