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  76/530458  FX35

 

This letter responds to the applicant's communication filed on July 12, 2004.  The examining attorney accepts and acknowledges the declaration and the amendment of the goods in part, and withdraws the likelihood of confusion refusal given applicant’s deletion of the Class 18 goods, however, the applicant must still address the following issue.

 

I.  FINAL REQUIREMENT - Identification of Goods (Indefinite in part):

 

The identification of goods is unacceptable as indefinite in part because the wording ‘clips’ in Class 6 lacks the wording ‘money’ prior to it (otherwise, by itself, ‘clips’ would be beyond the scope of the goods as filed) and because ‘case’ is misspelled in Class 28 and should be spelled ‘cast’.  Applicant is reminded again 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 identification as filed.  As such, ‘clips’ must be amended as suggested above or deleted.

 

Accordingly, the applicant may adopt the following identification for Classes 6 & 28, if accurate:

 

-          Metal key chain holders, money clips, in International Class 6;  and

 

-          Toys and playthings, namely miniature die cast vehicles, battery operated remote control vehicles, plastic model hobby craft kits, sit-in and ride-on toy vehicles, and playing cards, in International Class 28. TMEP § 1402.01.

 

Please note, the remaining goods are acceptable as amended for all other classes.

 

As such, this requirement is hereby maintained and made FINAL.

 

PTO ONLINE SEARCHING MANUAL:

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at www.uspto.gov.

 

II.  CONCLUSION:

 

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.

 

If applicant fails to respond within six months of the mailing date of this FINAL action, then the (1) class(es) and/or (2) goods/services to which the FINAL refusal(s) and/or requirement(s) apply, as specified above, will be deleted from the application.  The application will proceed forward for the remaining (1) class(es) and/or (2) goods/services.  37 C.F.R. §2.65(a).

 

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

 

Please note:  All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(703) 308-9114 x441

 

 

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 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.