UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/518999
APPLICANT: SELLE SAN MARCO DI GIRARDI COMM. LUIGI S ETC.
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CORRESPONDENT ADDRESS: JOSEPH J. ORLANDO BUCKNAM AND ARCHER 1077 NORTHERN BOULEVARD ROSLYN, NEW YORK 11576-1696
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom116@uspto.gov
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MARK: SELLE SAN MARCO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1688 Your Re
CORRESPONDENT EMAIL ADDRESS:
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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 76/518999
Search Results
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Identification of Goods
The wording “accessories and spare parts” in the identification of goods needs clarification because such items must be identified specifically as in “spare parts for bicycles, namely, forks and sprockets.” TMEP §1402.01. Every item that could possibly be designated a bicycle “accessory” will not necessarily belong in Class 12. Hence, information about adding classes to an application appears below.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).
Combined Applications
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
(3) Applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and
(c) both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c). A sample declaration appears below.
Disclaimers
Applicant must disclaim the descriptive wording “selle” apart from the mark as shown because it is the generic name of the goods. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “selle” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Translation
Applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §2.61(b); TMEP §809. In the present case, the wording “selle” needs translating for the record. The following translation statement is suggested: “The English translation of the word “selle” in the mark is “saddle.”
Specimen
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09. A sample declaration appears below.
The current specimen of record comprises – apparently – the front page of a catalog and is unacceptable as evidence of actual trademark use. Catalogs sometimes may be acceptable specimens from the goods, but only when the specimen clearly shows the mark in use to identify the specific goods named, and also provides clear information about how the goods may be ordered.
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
Declaration
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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
Fee Increase
Fee increase effective January 1, 2003
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.
/Doritt Carroll/
Examining Attorney, LO 116 (703) 306-7904
ecom116@uspto.gov
www.gov.uspto.report/teas/index.html
fax: (703) 746-8116
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.