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

 

This letter responds to the applicant’s communication filed on April 28, 2004.  In the first Office action, the applicant was required to amend the drawing of the mark, provide the state of incorporation, amend the identification of goods, clarify the number of classes applied for and indicate the significance of the wording in the mark.  The applicant responded by providing the state of incorporation, amending the identification of goods, clarifying the number of classes applied-for and indicating the significance of the wording in the mark.  In addition, the applicant’s response included a proposed amendment of the name of the entity that is applying.

 

The requirements to provide the state of incorporation, amend the identification of goods, clarify the number of classes applied for, and indicate the significance of the wording in the mark have been fulfilled and are herein withdrawn.  However, the applicant’s response did not include an acceptable drawing showing only one mark.  For that reason, the drawing requirement is maintained and continued.  In addition, the proposed change to the applicant’s name raises a new issue, which is addressed below.

 

Drawing

 

In the first Office action, the examining attorney indicated that the original drawing of the mark depicts three different representations of REGGAETON.  The applicant may only register ONE mark.  The original drawing shows three marks.  For that reason, the applicant must choose, and submit one representation of the mark.

 

Changing the Name of the Applicant

 

The applicant’s response included a proposed change of the entity that is applying for the mark.  The proposed name change is not acceptable for the following reason.  While an application can be amended to correct an inadvertent error in the manner in which an applicant’s name is set forth (see TMEP §1201.02(c)), an application cannot be amended to substitute another entity as the applicant. If the application was filed in the name of a party who had no basis for his or her assertion of ownership of (or entitlement to use) the mark as of the filing date, the application is void, and registration must be refused. 37 C.F.R. §2.71(d); TMEP §1201.02(b). Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991); In re Lettmann, 183 USPQ 369 (TTAB 1974); Dunleavy v. Koeppel Steel Products, Inc., 114 USPQ 43 (Comm’r Pats. 1957), aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Richardson Corp. v. Richardson, 51 USPQ 144 (Comm’r Pats. 1941); Celanese Corporation of America v. Edwin Crutcher, 35 USPQ 98 (Comm’r Pats. 1937). The Office will not refund the application filing fee in such a case.

 

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 and include the identifying information required at the beginning of this letter.

 

 

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.

 

 

 

/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 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.