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  76/535521

 

Dear Applicant and/or Applicant’s Representative:

 

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

 

No Conflicting Marks

 

After searching the Office database, the examining attorney found no similar pending or registered marks which would bar registration under the Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP 1105.01.

 

Refusal to Register: Drawing Represents More than One Mark

 

Registration is refused because the application seeks registration of more than one mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127.  Specifically, the drawing page shows REGGAETON (in typed form); REGGAETON (special form drawing with a black background) and REGGAETON (special form drawing with white background), which are separated to such an extent that they appear as three separate marks.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52(a); TMEP §807.03.  In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974); In re Robertson Photo-Mechanix, Inc., 163 USPQ 298 (TTAB 1969).

 

The applicant must choose one representation of the mark.  The examining attorney will withdraw this refusal if the applicant chooses one representation of the mark, and provides a new drawing page featuring only one mark.

 

State of Incorporation Required

 

The applicant must indicate its state of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.

 

Wording in the Identification of Goods must be Amended

 

The wording “clothing line: shirts, jerseys, shorts, blouses, boxers” in the identification of goods is unacceptable as indefinite because the phrase “clothing line” suggests the services (in another International Class) of designing clothing.  The applicant may amend this wording to “clothing, namely, shirts, jerseys, shorts, blouses, boxers,” in International Class 25 and/or “design for others in the field of clothing,” in International Class 42, if accurate.  TMEP §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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Clarification of Number of Classes Applied-For Needed

 

The application identifies goods and services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

The wording of goods/services in the original application suggests the following classes:

 

Class 25 – clothing, namely, shirts, jerseys, shorts, blouses, boxers

 

Class 42 – design for others in the field of clothing

 

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.

 

Inquiry into Significance

 

The applicant must indicate whether the wording “Reggaeton” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

/Pamela Y. Willis/

Trademark Attorney

Law Office 106

703-308-9106 ext. 126

703-746-8106 (FAX)

 

 

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.