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  76/508972

 

I.  APPLICATION NOT ENTITLED TO REGISTER--ONE-EARLIER FILED PENDING APPLICATION

 

The examining attorney encloses information regarding pending Application Serial No. 76-403152.  The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  In this regard, please note that the mere addition of a term to a mark is not generally sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii).  Therefore, if the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

II.  AMENDMENT OF THE IDENTIFICATION OF GOODS AND SERVICES

 

The applicant will adopt the following identification of goods and services, if accurate:  “clothing for men, women and children, namely, coats, raincoats, anoraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, tuxedos, vests, fur stoles, dresses, evening gowns, jumpers, skirts, kilts, pants, slacks, trousers, jeans, dungarees, jump suits, overalls, coveralls, flight suits, gym suits, jogging suits sweat pants, thermal underwear, shorts, rompers, shirts, sweaters, jerseys, blouses, tunics, sweaters, t-shirts, halter tops, tank tops, bodysuits, unitards, camisoles, chemises, undershirts, slips, foundation garments, body shapers, corsets, brassieres, bustiers, garter belts, briefs, boxer shorts, bloomers, underpants, panties, lingerie, loungewear, nightgowns, pantyhose, tights, knee highs, leg warmers, leggings, socks, head wear, hats, caps, hoods, head bands, bandannas, neckties, bowties, ascots, scarves, shawls, neckerchiefs, gloves, mittens, belts, sashes, cummerbunds, shoes, footwear, boots, athletic shoes, swimwear, bathing suits, bathing trunks, beachwear, beach cover ups, sarongs, ski wear, ski suits, ski bibs, ski pants, ski gloves, thermal socks, tennis wear, snow suits in International Class 25; providing business marketing information via the world wide web; dissemination of advertising for others via the world wide web; electronic billboard advertising in International Class 35; providing on-line non-downloadable magazines featuring entertainment and music information; entertainment services in the nature of the publication of books, magazines, leaflets, journals, brochures, manuals, newspapers, and photographs; entertainment services in the nature of fashion shows and theater productions; entertainment in the nature of visual and audio performances, musical, variety, news and comedy shows; entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances; entertainment services in lighting production; entertainment services in the nature of live performances by a musical band; conducting contests in nightclubs, bars and restaurants; conducting parties in nightclubs, bars and restaurants; providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; providing on-line reviews of movies, books, music, fashion, travel; providing information in the field of music, including commentary and articles about music, on-line via a global computer network; entertainment services in the nature of a television program in the field of [indicate specific subject matter]; production of music videos, motion pictures, television programs, television program series and home videos, featuring, but not limited to dramatic narrative, documentary, educational, comedic and musical works; radio programming services; distribution of radio programs for others; entertainment services, namely, providing prerecorded music online via a global computer network; on-line publication of music, magazines, compact discs, audio tapes, video tapes and records via a global computer network website in International Class 41; stock photography services, namely, leasing reproduction rights of photographs and transparencies to others in International Class 42.”  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 or services that are not within the scope of goods and services set forth in the present identification.

 

 

 

III.  COMBINED CLASS APPLICATIONS

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods and services in each class and list the goods and service by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  Please note in this regard that the specimen of record does not support any of the services suggested above.  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

As to the International Class 25 goods, the applicant need only comply with each of the following in that these goods are based upon an intent to use or Section 1(b) basis:

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)     The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

IV.  SUBSTITUTE SPECIMEN(S)_REQUIRED FOR THE SERVICES

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the mark in connection with any of services identified.[1]  The applicant must submit a specimen(s) showing the mark as it is used in commerce in connection with the services identified.  37 C.F.R. §2.56.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §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.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

 

The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.  Please note that the examining attorney has found a potentially conflicting pending application.

 

 

/Zhaleh Sybil Delaney/

Trademark Attorney

Law Office 116

(703) 306-7908

ecom116@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.