UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION / ELECTRONIC MAIL

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  You may respond via regular mail to the address listed above, or via e-mail to the e-mail address listed below.  In the body of the response, please clearly state the applicant’s name, mark, serial number, Law Office and Examining Attorney.  Also, e-mail responses must (1) include the entire response as e-mail text, not as an attachment; (2) list the serial number in the “Subject” line; (3) be signed electronically (using the same format accepted for electronically filed applications - the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable “signatures” could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); (4) include any attachments, specimens or evidence in JPG or GIF format only, and (5) address every issue raised.

e-mail address for formal responses:  <mailto:ecom103@uspto.gov>

 

 

 

Serial Number  76/526621

 

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

 

Search of Office Records

 

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. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/211950.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Nevertheless, the applicant should note the following informalities:

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because the word “such as” makes the identification extremely broad – “such as” means that there may be goods included within the applicant’s recitation that are unlisted and fall within the scope of other International Classes.  The applicant may adopt the following identification, if accurate: 

 

Clothing apparel, namely, sweat shirts, jeans, sweat suits, long sleeve T-shirts, short sleeve T-shirts, sweaters, belts, socks, underwear, dress shirts, casual shirts, caps, jackets, coats and vests, in International Class 25.

 

TMEP section 1402.01.

 

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 1402.06(a).  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Mark Differs on Drawing and Specimen – New Specimen Required

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required.  In the present case, the drawing displays the mark in a stylized, cursive form with a stylized depiction of a man, and the specimen shows the mark simply in block type font without the stylized depiction of a man.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears on the drawing, with 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. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  37 C.F.R. §2.51; TMEP §807.14.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. For your convenience, current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call. Those with Internet access may also obtain status information by accessing the USPTO web site at: http://tarr.gov.uspto.report/.

 

__________________________________________

/Ronald E. Aikens/

Trademark Office

Law Office 103

Tel: (703) 308-9103, ext. 128

Fax: (703) 746-6422

Ron.Aikens@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.