UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/526261
APPLICANT: Bucilla Corporation
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CORRESPONDENT ADDRESS: DAN R. MUSICK BUCILLA CORPORATION P.O. BOX 7600 NORCROSS, GEORGIA 30091-7600
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
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MARK: PAPER STITCHES
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/526261
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 No. 78/225379. 37 C.F.R. §2.83. The filing date of the referenced application precedes the applicant's filing date. There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP section 1208.01.
The applicant must address the following informalities to enable further prosecution of the application.
The identification of goods is unacceptable as indefinite because, although the applicant has identified 2 classes in the application, the applicant has not divided the goods accordingly. In addition, the applicant must specify that the Class 26 goods are sold as a kit. The applicant may adopt the following identifications if accurate: TMEP section 1401.01.
Class 16: “Greeting cards, envelopes”; and
Class 26: “Embroidery kits comprised of embroidery floss, felt cloth, sequins, decorative beads, needle and printed instructions for use”.
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 that are not within the scope of goods set forth in the present identification.
Applicant must insert a disclaimer of PAPER for Class 16 and STITCHES for Class 26 in the application because the terms describe the nature and use of the goods. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “PAPER” apart from the mark as shown for Class(es) 16.
No claim is made to the exclusive right to use “STITCHES” apart from the mark as shown for Class(es) 26.
/Carolyn Pendleton Cataldo/
Trademark Attorney
Law Office 103
Phone: (703) 308-9103 (ext. 222)
Facsimile: (703) 746-8103
carolyn.pendleton@uspto.gov
NOTE TO APPLICANTS: The examining attorney’s email address should be used for informal questions and comments ONLY. The email address ecom110@uspto.gov is used for formal responses to Office Actions ONLY. DO NOT send questions or comments to the ecom110@uspto.gov email address.
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.