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  76/509745

 

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. Section 1052(d).  TMEP section 1105.01.

 

However, several concerns remain to be addressed.

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:

“LEATHER AND IMITATION OF LEATHER, SYNTHETIC LEATHER PIECE GOODS, AND ARTICLES MADE FROM THESE MATERIALS, NAMELY, [specify common commercial name for goods, e.g., leather bags, leather key chains, etc.]; ANIMAL SKINS AND HIDES; TRUNKS, TRAVELING BAGS, HAND BAGS AND SHOULDER BAGS; UMBRELLAS, PARASOLS AND WALKING STICKS; WHIPS, HARNESSES AND SADDLERY” in International Class 18.

“ROPES, TWINES, STRINGS, [specify, e.g., commercial, mosquito, etc.] NETS, TENTS, AWNINGS OF [specify, e.g., plastic, fabric, or not of metal],  CANVAS TARPAULINS, SAILS, SACKS [specify use, e.g., for  the transportation or storage of materials in bulk] AND FISHING NETS; PADDING MATERIALS NOT OF PLASTIC AND [specify, e.g., Down feathers for] STUFFING MATERIALS; RAW FIBROUS TEXTILE MATERIALS “ in International Class 22.  TMEP section 804.

The applicant’s identification of goods in International Class 23 is acceptable.

TEXTILE PIECE GOODS INCLUDING WOVEN, NON-WOVEN, KNITTED AND NETTED FABRICS, namely [specify e.g. linen fabric, curtain fabric, nylon fabric] ; BED [sheets] AND TABLE COVERS, namely table runners and table linens ; TEXTILE ARTICLES NOT INCLUDED IN OTHER CLASSES [specify e.g. cloth bunting], in class 24.

CLOTHING [namely, hats, caps, shirts, pants and jackets], FOOTWEAR, HEADGEAR [namely hats and caps], in class 25

Amendment Guidelines

 

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. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.

 

Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. 

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

General Inquiry on Significance

The applicant must indicate whether “TOREX” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Applicant May Elect Basis

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

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.

 

 

 

 

 

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(703)308-9113 ext. 286

John.Lincoski@USPTO.GOV