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  76/532989

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

 

This letter responds to the applicant’s communication filed on May  21, 2004.

 

Status of Application

Registration was refused because of procedural informalities concerning a description of the mark, and translation and transliteration of the mark. 

 

Applicant satisfactorily responded to the procedural informalities concerning a description of the mark, and translation of the mark.  

 

However, the refusal for registration is maintained and continued.

 

REQUIREMENTS

1.   TRANSLITERATION OF THE MARK:

Applicant must submit a transliteration of the non-Latin characters in the mark.  37 C.F.R. §2.61(b); TMEP §809.  A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-Latin characters.  The following format is suggested:  “The non-Latin characters in the mark transliterate to “^.”

 

2.   DISCLAIMER REQUIREMENT:

The applicant must disclaim the wording FOODS in the mark because it is descriptive of the nature of the goods provided.

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “FOODS” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

3.  OWNERSHIP OF PRIOR REGISTRATIONS:

Applicant provided a claim of ownership, but there is an additional registrered mark, and if applicant is the owner of U.S. Registration No. 2680213, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  See attached enclosure.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2680213 and 2701938.

 

 

 

 

 

 

Darryl M. Spruill

Trademark Attorney

Law Office 112

(703) 308-9112, Ext. 203

darryl.spruill@uspto.gov

/Darryl M. Spruill/

 

 

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.