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  76/535708

 

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

 

Search Of The Records

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.

 

Entity of Applicant

The application lists more than one party as the applicant.  Usually a mark is owned by a single business entity or one individual.  If the applicants own the mark jointly, they must state that they are joint applicants.  TMEP §803.03(d).  The applicant cannot amend the application to designate another entity as the applicant.  If the application was filed in the name of the wrong party, the application is void.  The true owner may file a new application, with a filing fee.  TMEP §803.06.

 

The applicant must indicate national citizenship of each joint owner for the record.  Trademark Act Section 1, 15 U.S.C. §1051; 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.

 

 

 

Identification of Goods/Services

The application identifies goods/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. 

 

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.  37 C.F.R. §2.6(a)(1). 

 

The wording “entertainment audio visual for TV,” “radio, motion picture – name of song and title of animation/moving image feature film production,” “products,” “apparel,” “supplies,” “sporting goods,”“learning products,” “accessories,” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses.   In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

Further, the identification of goods is indefinite because the applicant uses the wording “including.”  The identification of goods must be specific.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

With respect to the wording “plastic entertainment,” “slogan or phrase,” “packaging vinyl,” and “audio/visual” when an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification.  In this case, however, the examining attorney cannot determine the nature of the goods/services because there is insufficient information in the record.

 

The applicant may amend to adopt the following identification of goods/services, if accurate:

 

International Class 9:  Magnetic learning products, namely, prerecorded magnetic data carriers featuring __specify subject matter, e.g. children’s learning games.

 

International Class 16: Cardboard, paper place mats, stationery, coloring books, printed instructional, educational, and teaching materials [specify area of use], lunch bags, pencil cases, tablemats of paper, flash cards.

 

International Class 18:  Book bags, back packs.

 

International Class 24:  Tablemats not of paper.

 

International Class 25:  Apparel, namely, __specify type, e.g. T-shirts, jackets, headwear, hats, footwear, shoes, sneakers.

 

International Class 27:  Textile floor mats for use in the home

 

International Class 28:  Plush toys

 

International Class 41:  Entertainment in the nature of on-going television programs in the field

of [indicate specific field, e.g. news, comedy, variety].

 

If the applicant has any identification questions/concerns, the applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services. The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

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

 

Classification

If the applicant adopts the suggested amendment to the identification of goods and services, the applicant must amend the classification to International Classes 9, 16, 18, 24, 25, 27, 28 and 41.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

Multiple Class Application

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.  

 

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.  Please note that all electronic communications must be signed using the "/name/" format.  TMEP section 710.03(c).

 

Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to office actions. 

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax.  TMEP 306.04; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

  

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Josette M. Beverly

Trademark Attorney

Law Office 112

(703) 308-9112 x. 154

(703) 746-8112 (fax)

http://www.gov.uspto.report/teas/index.html (file responses)

josette.beverly@uspto.gov (submit questions only)

Please note:  All electronic communications must be signed using the "/name/" format.  TMEP section 710.03(c).

 

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.