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. 

 

 

Serial Number  76/527026

 

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

 

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. Section 1052(d).  TMEP section 1105.01.

 

Nevertheless, the applicant’s mark cannot be approved for publication unless and until the following requirements are satisfactorily addressed.

 

RECITATION OF SERVICES

 

The recitation of services is unacceptable because it does not describe the services with sufficient specificity and refers to services in more than one class.  In particular, the applicant should note that “sales” themselves are not recognized as a service under the Lanham Act or the International (Nice) Agreement since only the seller benefits directly from sales. Third parties benefit from the services that accompany sales, such as the bringing together of goods in one location for purchasers to view and select, or the creation of an attractive and convenient atmosphere to shop.

 

The applicant has also classified the services incorrectly.  The applicant must amend the application to classify the services in International Classes 35 and 45.  37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP sections 805, 1301.06 and 1401.

 

The applicant must amend the recitation to indicate the nature of the services and their particular field and to properly classify the services.  TMEP §1402.11. The applicant may adopt one or both of the following formats, if accurate:

 

            Retail store services featuring caskets, in International Class 35.

 

Funeral home services, cremation services, cremation consultation services, and interment services, in International Class 45.

 

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 services that are not within the scope of the services recited in the present identification.

 

MULTIPLE-CLASS APPLICATIONS

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

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

 

/Catherine Pace Cain/

Trademark Attorney

Law Office 113

Phone: 703-308-9113 (ext. 273)

Fax: 703-746-8113

 

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.