UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE 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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/536152

 

The following issues were discussed in communication with James W. McKee on September 15, 2003 and September 26, 2003.

 

            Amend the Identification of Goods and Services.

 

            The identification of goods and services is unacceptable as indefinite.  Some of the goods and services are improperly classified.  Some require a more specific identification.  The examining attorney has placed his recommendations in italics below.   The applicant may adopt the following identification, if accurate:

 

            Key rings made primarily of metal and metal license plates in International Class 6. 

 

Computer software screensavers; computer mouse pads (Note that the applicant’s identification of “computer mouse pads” in International Class 20 was incorrect and moved to International Class 9);  computer disk storage boxes; blank magnetic data carriers; computer software disk carrying cases; magnetic encoded affinity credit cards; computer game cassettes, computer game discs, computer game joy sticks, computer game programs, computer game software, computer game tapes (Note that the applicant’s identification of “computer game cassettes, computer game discs, computer game joy sticks, computer game programs, computer game software, computer game tapes” in International Class 28 was incorrect and moved to International Class 9) in International Class 9.

Lamps and flashlights in International Class 11.

            License plate frames in International Class 12.(New Class Added.)

Desktop business card holders; notebooks; loose-leaf binders; folders; note pads; writing paper and envelopes; decals; postcards; bumper stickers; calendars; posters; appointment books; playing cards; desk accessories, namely ______________ (please specify these goods by their common commercial name, e.g., blotters, pen and pencil holders, paper, staplers, adhesive tape dispensers for household or stationery use, pens, pencils, letter openers, paper weights, stamp boxes for postage stamps, stamp pads, etc. NOTE:  the applicant originally placed these goods in International Class 20); stickers; book ends; paper napkins; date books (originally referred to as a “view” book); picture books (originally referred to as a “view” book); brochures featuring ____________________ (please state the subject matter of these goods); affinity credit cards without magnetic encoding;  newsletters concerning university activities and events; flags, banners and pennants made of paper in International Class 16.

                  Business card cases; trunks for traveling; tote bags; backpacks; briefcases and attached cases; all purpose sports bags; umbrellas; wallets; luggage tags; identity and credit card cases;  garment bags for travel; gym bags; duffel bags; travel bags; and toiletry cases sold empty in International Class 18.

Flags, banners and pennants all made of plastic; diploma frames; chairs; pillows; mirrors; bulletin boards and framed pictures in International Class 20.

Drinking mugs; tankards; glasses; cups; tumblers; ice buckets; portable coolers;  wastebaskets in International Class 21.

            Table cloths not of paper; blankets; flags, banners and pennants all made of cloth in International Class 24.

Clothing for men, women and children, namely, cloth and plastic baby bibs, booties, cheerleading costumes, dresses, ear muffs, hats, headbands, jackets, jerseys, mittens, neckties, nightshirts, pajamas, pants, playsuits, shirts, shoes, shorts, slippers, socks, sun visors, sweatbands, sweatpants, sweatshirts, sweaters, t-shirts, vests, warm-up suits in International Class 25.

            Stuffed toy animals, dolls, puppets, kites, board games, balloons, golf balls, basketballs and soccer balls, flying discs, decorative windsocks, dart games consisting of dart board case, dart board, darts, points, shafts and stems, board games, Christmas tree ornaments, golf clubs in International Class 28.

       Retail variety store services, computerized on-line retail bookstore and retail variety store services in International Class 35.

Financial services, namely ______________ (please specify these services by their common commercial name)  and life insurance underwriting in International Class 36.

Library services, namely rental of books; education services in the nature of courses at the undergraduate university level and distributing course material therewith; education services in the nature of courses at the graduate university level and distributing course material therewith; extension, continuing and community educational services, namely, conducting classes, public lectures, workshops, seminars, conferences and exhibitions in the field of __________________________ (please specify the subject(s) of these services) and distributing course material therewith; teaching hospital services, namely, conducting classes, lectures, seminars, workshops, conferences and exhibitions in the field of __________________________ (please specify the subject(s) of these services) and distributing course material therewith entertainment in the nature of theater productions; entertainment services, namely, sports exhibitions, and live musical concerts; in International Class 41.

Scientific, medical, health care, and ________________ (where the applicant used the term “humanities,” please describe this service in greater detail, e.g., what does the applicant mean by “humanities?”) research services in International Class 42.

Hospital, medical, and health care services; providing medical services delivered by mobile unit; providing health related support group therapy services in International Class 44.  (New class added.)

 

            Trademark Manual of Examining Procedure Section 1402, (3rd Edition January 2002).

 

            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. Section 2.71(a); Trademark Manual of Examining Procedure Section 1402.06, (3rd Edition January 2002).  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

            For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at  http://atlas/netahtml/tidm.html.

 

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 specifically identify the goods and services in each class and list the services by international class with the classes listed in ascending numerical order.  Trademark Manual of Examining Procedure Section 1403.01, (3rd Edition January 2002).

 

            (2)  The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); Trademark Manual of Examining Procedure Section 810.01 and 1403.01, (3rd Edition January 2002). 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.  

 

            Claim Ownership of Prior Registration.

 

            The applicant will submit the following claim of ownership:  The applicant is the owner of U.S. Registration Nos. 1953451, 1955117 and others.

 

            Identification of a registration is necessary because the registration would, if not owned by the applicant, be a proper reference and basis for refusal under §2(d) of the Act.

 

            37 C.F.R. Section 2.36; TMEP section 812.

 

            Disclaimer of Descriptive Wording.

 

            Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

 

            WESTERN RESERVE is defined as follows:

 

Western Reserve

 
Western Reserve

A region of northeast Ohio bordering on Lake Erie. It was retained by Connecticut after other western claims were ceded to the U.S. Congress in 1786. Much of the area was given or sold to immigrants from Connecticut (1786-1800), and the remainder of the territory was ceded to Ohio in 1800 and became part of the Northwest Territory.[1]

 

The wording WESTERN RESERVE in the applicant’s mark is primarily geographically descriptive of the applicant’s goods and services because it describes the region from whence the goods and services originate, namely, the Western Reserve area of the United States, as defined above.  The applicant must insert a disclaimer of WESTERN RESERVE in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1208.

 

            The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use WESTERN RESERVE apart from the mark as shown.

 

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

 

            Responding to this Office Action.

 

            As discussed with applicant’s counsel, this examining attorney will be happy to resolve this issue in this application (and its companions) via Examiner’s Amendment.

 

            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.

 

            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.

 

            If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.          

ADDITIONAL CUSTOMER INFORMATION

 

· NOTICE FOR APPLICANT’S FILING IN INTERNATIONAL CLASS 42

 

Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of goods and services divided prior International Class 42 into four service mark classes.  Information about revised International Class 42 and new International Classes 43, 44, and 45 is available at www.gov.uspto.report/web/offices/tac/notices/notices.htm.

 

All applications filed on or after January 1, 2002, must comply with the new classification schedule.  For applications filed before January 1, 2002, the new classification schedule is optional.  Applicants opting to amend to the new schedule must advise the assigned Examining Attorney.

 

 · CHANGE OF CORRESPONDENCE ADDRESS

 

Applicants may now file changes of correspondence via a new form on TEAS.   Address changes may be performed  on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form, which is available online at: www.gov.uspto.report/web/trademarks/tmchangeaddress.htm.

 

· NEW ELECTRONIC RESPONSE TO OFFICE ACTION FORM

 

On April 30, 2002, the Trademark Operation posted an electronic Response to Office Action form on the TEAS (Trademark Electronic Application System) web site.  By using this new web-based TEAS form, customers can (1) respond to an Office Action based on an application or Statement of Use; or (2) pay an additional fee after a phone call from the Office, i.e., to enable an Examiner's  Amendment.  Upon receipt of the electronically-submitted response, the prosecution history will automatically be updated to show "TEAS Response to Office Action received."  To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/oa200>>.  NOTE: This form cannot be used to respond to any actions from either the Intent-to-Use (ITU) or Post-Registration areas. Forms for that purpose will be available in the future.

 

· NEW ELECTRONIC PRELIMINARY AMENDMENT FORM

 

On April 30, 2002, the Trademark Operation posted an electronic Preliminary Amendment form on the TEAS (Trademark Electronic Application System) web site.  By using this new web-based TEAS form, customers can submit a Preliminary Amendment prior to examination.  Upon receipt of the electronically-submitted preliminary amendment, the prosecution history will automatically be updated to show "TEAS Preliminary Amendment received."  To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/pa200>>.  NOTE: This form should ONLY be used if an already-filed application has not yet been examined by the Office.

 

 

 

 

 

 

/John D. Dalier/

Trademark Examining Attorney

Law Office 105

(703) 308-9015, 131

ecom105@uspto.gov

 

 

 

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