Mr. Straser,
Mr. John Warren (representative attorney for the University of Houston LEX trademark application) has forwarded me the attached trademark application office action for completion. May we
respond to you via email in a issue by issue format as denoted in the original priority action? In other words, may we respond as such:
Classification
Delete the following class of goods/services from the application, SN 76/536,857: International Class 16. Amend the application to classify the good/services into International Class
12. The listing of goods/services is license plate frame.
Disclaimers
No claim is made......
Drawing
........
Significance of Mark
........
so on and so forth?
I look forward to hearing from you soon,
wendy
Technology Licensing Assistant
Office of Intellectual Property Management
University of Houston
316D E Cullen Building
Houston, Texas 77204-2015
Phone: (713) 743 - 9185
Fax: (713) 743 - 9577
_____
From: Warren, John P
Sent: Friday, February 20, 2004 9:35 AM
To: Fitzgerald, Wendy M
Subject: FW: *****SPAM***** TRADEMARK APPLICATION NO. 76536857 - LEX - 76-322,115
John P. Warren, Jr.
Associate Vice Chancellor for Intellectual Property Management
Associate General Counsel for Research and Intellectual Property Management
University of Houston System
316 E Cullen Building
Houston, TX 77204-2015
(713) 743-3754
(713) 743-9577(FAX)
-----Original Message-----
From: ECom114 [mailto:ecom114@USPTO.GOV]
Sent: Friday, February 20, 2004 9:29 AM
To: jwarren@UH.EDU
Subject: *****SPAM***** TRADEMARK APPLICATION NO. 76536857 - LEX - 76-322,115
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/536857
APPLICANT: University of Houston
CORRESPONDENT ADDRESS:
JOHN WARREN
UH HOUSTON GENERAL COUNSEL OFFICE
316 E. CULLEN BLDG.
HOUSTON, TX 77204-2015
RETURN ADDRESS:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
ecom114@uspto.gov
MARK: LEX
CORRESPONDENT’S REFERENCE/DOCKET NO: 76-322,115
CORRESPONDENT EMAIL ADDRESS:
jwarren@uh.edu
Please provide in all correspondence:
1. Filing date, serial number, mark and
applicant's name.
2. Date of this Office Action.
3. Examining Attorney's name and
Law Office number.
4. Your telephone number and e-mail address.
PRIORITY ACTION
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 76/536857
The following issues were discussed in communication with John Warren on February 20, 2004.
The assigned trademark examining attorney has reviewed the referenced application filed on August 12, 2003, and has determined the following.
Search Results
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP
§704.02.
Classification
Applicant must correct the classification of the goods in the application, in International class 16, and amend the application to classify them in International Class 12. 37 C.F.R.
§§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Disclaimers
Applicant must disclaim the descriptive wording “LEX” apart from the mark as shown, for International class 21, because it merely describes the subject matter content of the “mugs” in International
class 21. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
Drawing
Applicant must submit a statement that the lining shown in the drawing is a feature of the mark. 37 C.F.R. §2.37; TMEP §807.09(e).
Significance of Mark
Applicant must specify whether “LEX” has any significance in the academic industry, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b). It is believed that
LEX translates into English as “law.”
Claim of Ownership
If applicant is the owner of U.S. Registration No. 917,683, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration No. 917, 683.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Richard A.Straser/
Trademark Examining Attorney
Law Office 114
(703) 308-9114, ext. 178;
www.ecom114@uspto.gov
fax no. (703) 746-8114
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>