Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

Serial Number  76/512379

 

The following issues were discussed in a telephone call to Shelly McCarty (for Paul M. Denk) on October 24, 2003.

 

Office Search

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. §1052(d).  TMEP §704.02.

 

State of Incorporation Required

The applicant has indicated that it is a corporation.  The applicant must indicate its state of incorporation (or, if the applicant is not a U.S. corporation, the applicant must indicate its country of incorporation).  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04. 

 

New Drawing Required

The drawing is not acceptable because it will not reproduce satisfactorily (see attachment), and because it includes the “TM” symbol.  The “TM” symbol is not part of the mark and must be deleted from the drawing.  TMEP §§807.04 and 807.15.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Note:  Drawing is in Special Form

The applicant has submitted a drawing page showing the mark in special form, but claims both a design (i.e., special form) and typed form in the body of the application.  Please note that, as the applicant has submitted a separate drawing page showing the mark, the drawing controls for purposes of determining what the mark is.  The Office will disregard the claim of typed form in the written application.  The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing page.  37 C.F.R. §2.72; TMEP §807.05; see also In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Comm'r Pats. 2001). 

 

Amended Classification of Goods Required

The applicant has classified the CD holders in International Class 20; the correct classification is International Class 9.  In addition, the applicant has classified the laundry bags in International Class 21; the correct classification is International Class 22.  The applicant must re-classify these goods in the correct classes.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Amended Identification of Goods Required

The identification of goods is unacceptable as indefinite.  The applicant must specify the type of tools and whether they are power tools (Class 7) or hand tools (Class 8), spell out the acronym “CD,” and clarify the nature of the “auto shades” and “screen visors.”  The applicant may adopt the following identification, if accurate: 

 

Power[1] tools, namely, _____ (specify, e.g., drills, saws, screwdrivers) (Class 7);

 

Hand tools, namely, _____(specify, e.g., drills, saws, screwdrivers) (Class 8);

 

Compact disc holders (Class 9);

 

Automobile visors, automobile windshield shades, automobile windshield visors and automobile visor organizers (Class 12);

 

Laundry bags (Class 22).

 

TMEP §1402.01.

 

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 that are not within the scope of goods set forth in the present identification.  For assistance regarding an acceptable listing of goods, 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/.

 

Multiple-Class Application Requirements

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.  

 

Fee Increase

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.

 

Response Guidelines

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  Electronically-filed responses must include a valid electronic signature.  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks placed between two forward slash (“/”) symbols as an electronic signature.  37 C.F.R. §§1.4(d)(1)(iii) and 2.33(d); TMEP §§304.08 and 804.05. 

 

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

 

 

/Kathleen de Jonge/

Examining Attorney, Law Office 116

(703) 306-7916

(703) 746-8116 (fax)

ecom116@USPTO.gov (formal responses)

 

 

 

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