To: | Yao Ming (bkuenzinger@bhsmck.com) |
Subject: | TRADEMARK APPLICATION NO. 76518769 - YAO MING - N/A |
Sent: | 10/6/03 11:33:13 AM |
Sent As: | ECom112 |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/518769
APPLICANT: Yao Ming
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CORRESPONDENT ADDRESS: JERRY D. HALL BROWN, HALL, SHORE & MCKINLEY 3031 W. MARCH LANE, STE. 230W STOCKTON, CA 95219
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom112@uspto.gov
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MARK: YAO MING
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: bkuenzinger@bhsmck.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/518769
The assigned examining attorney has reviewed the referenced application and determined the following.
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 76485728 and 78225116. 37 C.F.R. §2.83.
There may be a likelihood of confusion between the applicant’s mark and the marks in the above noted applications under Section 2(d) of the Act. The filing dates of the referenced applications precede the applicant’s filing date. If one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).
The applicant must indicate that he is an individual and also indicate his national citizenship for the record. Trademark Act Section 1, 15 U.S.C. §1051; 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.
The recitation of services is unacceptable as indefinite because the exact nature and classification of the services is unclear. The applicant must amend the recitation to specify the common commercial name of the services. If there is no common commercial name for the services, the applicant must describe the services and indicate their nature. TMEP section 1301.05.
The applicant may adopt the following recitation of services, if accurate:
Promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with a particular sports celebrity, in International Class 35.
Entertainment in the nature of live competitions in the field of athletics; Entertainment services, namely, personal appearances by a sports celebrity, in International Class 41.
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(b); TMEP section 804.09. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
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 services in each class and list the services 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/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). 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).
If the name shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name. If the name does not identify a living individual, the applicant should state so for the record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.
An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the services. TMEP §904. The application does not contain a specimen. The applicant must submit a specimen, and must submit the following statement:
The specimen was in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
Scott Baldwin /sb/
Trademark Attorney
Law Office 112
703-308-9112 x124
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.