UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within 6 months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number 76/516207

 

EXAMINER'S AMENDMENT

 

First, the applicant should note that reference to any prior pending application is withdrawn by the examining attorney.

 

Second, in accordance with the authorization granted pursuant to TMEP §707.02, the application has been AMENDED as indicated below.  No response is necessary unless there is an objection to the amendment.

 

The examining attorney has removed traces of the ® symbol from the drawing.  The drawing will be rescanned into the database.  The drawing has been uploaded into the TICRS system.

 

 

PRIORITY ACTION

 

Applicant must respond to each refusal and/or requirement raised below.  The disclaimer requirement is a new issue.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling.  TMEP §§708.01 and 708.05.  PLEASE NOTE:  Applicant is encouraged to email or telephone the trademark examining attorney to resolve the issues raised below.

 

Applicant Cannot Assert Both Section 1(a) and Section 1(b) Filing Bases for the Same Goods/Services

The applicant asserts use of the mark in commerce for nutritionally fortified water and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods.  An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).  The applicant must delete one basis or divide the goods/services between the two bases, as appropriate. 

The examining attorney suggests that the applicant delete the Section 1(b) intent to use basis as the applicant has supplied acceptable specimens of use.

 

Disclaimer

The applicant must insert a disclaimer of H20 in the application as that term is descriptive of the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because the term is the commonly know chemical formula for water.  The dictionary states water is “a clear, colorless, odorless, and tasteless liquid, H2O, essential for most plant and animal life and the most widely used of all solvents.”[1]  The goods are a nutritionally fortified water.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use H2O apart from the mark as shown.

Contacting the Examining Attorney

The examining attorney can be contacting at the following telephone numbers and fax numbers:

 

Monday -  Friday:             571-272-9171

 

DIRECT FAX (not for formal responses):            571-273-9171

 

EMAIL ADDRESS:                 amy.hella@uspto.gov

 

NOTE TO APPLICANTS:  The examining attorney’s email address should be used for informal questions and comments ONLY.   See below for instructions on how to respond to this Office Action.

 

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

 

 

 

 

/Amy E. Hella/

Trademark Examining Attorney

Law Office 110

U.S. Patent & Trademark Office

571-272-9171

 

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

·            ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.

·            REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm