Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Mark:  Platinium

Serial Number  76/523852

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Standard Character Claim 

 

Applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

Translation

 

The applicant must indicate if there is any translation of the non-English wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  The translation shall read as follows:  The English translation of PLATINIUM is PLATINUM.

 

If there is no translation, the applicant must indicate if there is any other meaning in the trade or field.

 

Application Pursuant to Sections 1(b) and 44(d)

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

Country of Origin

 

If applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, then applicant must provide evidence that FRANCE is a “country of origin,” i.e., that applicant has a bona fide and effective industrial or commercial establishment in FRANCE.  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04.

 

The application record shows that applicant is domiciled in GERMANY, but the foreign application on which applicant relies for priority was filed in FRANCE.  To obtain a priority filing date under §44(d), the foreign application does not have to be filed in applicant’s country of origin.  However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which applicant relies for priority, applicant must establish that the country in which the application was filed is its country of origin, i.e., that applicant has a bona fide and effective industrial or commercial establishment in that country.

 

If applicant cannot establish that the country in which the foreign application was filed is the applicant’s country of origin, registration under §44(e) will be refused.  In such case, applicant may amend the application to rely on §1(a) or §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  Where an applicant meets the requirements of §44(d) as of the filing date of the United States application, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(b)(4); TMEP §806.04(b).

 

Please note that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03.

 

Advisory Note - Additions to Goods or Services Not Permitted

 

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.

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.

 

Trademark Status Line

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

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

 

 

 

 

 

/Mary E. Crawford/

Trademark Attorney

Law Office 102

(703) 308 – 9102 ext. 162

Email:  ecom102@uspto.gov

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.