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  76/534354

 

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

 

1] GOODS/SERVICES/CLASSIFICATION/FEES

 

Both international classes require amendment as follows.

 

The applicant must amend the identification of goods by deleting from Class 19 the following wording which must be separately identified and classified as follows:  INTERNATIONAL CLASS 20 – FURNISHINGS FOR LOG HOMES, NAMELY INTERIOR AND EXTERIOR FURNITURE.  TMEP §1402.01.

 

The recitation of services is unacceptable as indefinite because the wording THE OPERATION OF A BUSINESS DEALING IN indicates that the service is the operating of one’s own business; the operating of one’s business does not constitute a service.  Also, the wording “COMPONENTS AND HARDWARE FOR…” is unclear and does not, as stated, indicate an aspect of the services.  If the applicant renders the service of constricting homes, the applicant must simply state so by amending to:  INTERNATIONAL CLASS 37 - construction of log and timber frame homes and other structures IN ACCORD WITH CUSTOM plans and specifications for log and timber frame structures, AND CONSTRUCTION OF log and timber frame structures USING pre-fabricated MATERIALS and kits COMPRISING components and hardware for log and timber frame structures.   TMEP §1402.11.

 

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

 

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 goods/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 goods/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.  

 

The applicant submitted TWO filing fees to cover only TWO international classes.

 

2]  SIGNIFICANCE INQUIRY

 

The applicant must indicate whether “1818” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

 

FOREIGN BASIS

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).  If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

SEARCH

 

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. §1052(d).  TMEP §704.02.

 

AUTHORITIES

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.

 

SIX MONTH deadline: The undersigned has no authority to grant additional time to respond to this letter.  All applicants MUST SIGN their response by hand or electronically [eg: /john doe/].

 

Failure to completely and clearly respond to each of the above enumerated issues may result in abandonment for failure to file a complete response.

 

/JMBK/Jennifer M.B. Krisp

Attorney, Law Office 112

703-308-9112 x146

Email: ecom112@uspto.gov

LO 112 Fax:  703-746-8112

 

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.