UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/519004
APPLICANT: International Foundation for Election Sy ETC.
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CORRESPONDENT ADDRESS: ATTN: BOX INTELLECTUAL PROPERTY |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: INTERNATIONAL FOUNDATION FOR ELECTION SY ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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 76/519004
This letter responds to the applicant’s communication filed on June 29, 2004. The applicant 1) made a claim of acquired distinctiveness and 2) proposed amendment to the identification of services. Neither item is acceptable, as discussed below. As a preliminary matter, it appears the instant application was mixed up with the applicant’s Serial No. 76-519007 (for the same mark) during the course of our transition to a “paperless” ecommerce operation. The issues below probably resulted in large part from the mix up and the differences between the applications. The examining attorney apologizes for any inconvenience to the applicant and its attorneys. The refusal to register under Trademark Act Section 2(e)(1) is continued and maintained. The examining attorney may reconsider the refusal once a statement of use or allegation of use is filed.
Applicant should note that because this application was filed on the basis of a bona fide intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and the applicant has not alleged use of the mark in commerce in either an amendment to allege use or a statement of use, any claim of distinctiveness under Section 2(f) is inappropriate.
Moreover, the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is also not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed. 37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. Section 2.75(b); TMEP section 708.01.
Disclaimer
The applicant must insert a disclaimer of FOUNDATION in the application. The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because FOUNDATION is generic as applied to the goods or services. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn's Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP section 1213.02(b). See attached definition from The American Heritage â Dictionary of the English Language, Third Edition copyright ã 1992 establishing the common meaning of FOUNDATION.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use FOUNDATION apart from the mark as shown.
The applicant should place semicolons (rather than parentheses) between each individual tenet of the identification in International Class 35 in order to clarify which terms pertain to a particular item. Parentheses should not be included, as they are used by the Office to designate goods and services that have been deleted from Registrations. The wording in the identification of services for International Class 41 is acceptable. TMEP §1402.11.
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 or services that are not within the scope of the goods and services recited in the present identification.
The applicant may wish to visit the Patent and Trademark Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ to find examples of acceptable identifications of goods and services.
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. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing. If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. To reach the undersigned attorney by telephone after October 26, 2004, please call (571) 272 - 9397. Thank you.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
USPTO
/Tracy Whittaker-Brown/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 111
703-308-9111, ext. 468
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.
foun·da·tion
foun·da·tion (foun-dâ¹shen) noun
1. The act of founding, especially the establishment of an institution with provisions for future maintenance.
2. The basis on which a thing stands, is founded, or is supported. See synonyms at base1.
3. a. Funds for the perpetual support of an institution; an endowment. b. An institution founded and supported by an endowment.
4. A foundation garment.
5. A cosmetic used as a base for facial makeup.
— foun·da¹tion·al adjective[1]
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.