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  76/540606

 

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

 

1.         Search Results.

 

            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). Trademark Manual of Examining Procedure Section 704.01, (3rd Edition January 2002).

 

2.         Dual Basis Not Permitted in this Application.

 

At present, the applicant has indicated the basis for the application as Trademark Act Section 1(b), an intent to use the mark in commerce.  However, the applicant also filed a specimen, presumably under Trademark Act Section 1(a), for the same goods or services.  This is not permitted.  An application may be filed based on any of the following:

 

(1)  use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a);

 

(2)  a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b);

 

(3)  a claim of priority, based on an earlier‑filed foreign application under Trademark Act Section 44(d), 15 U.S.C. Section 1126(d);

 

(4)  registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. Section 1126(e). 

 

The applicant must clearly specify at least one basis for filing and the applicant must submit all of the requirements for the basis asserted.  Depending on the circumstances, the applicant may be entitled to assert more than one basis for filing.  In such a case, the applicant must:  (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. Section 2.34.

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce, under Trademark Act Section 1(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), for the same goods or services.  37 C.F.R. Section 2.34(b)(1). 

 

Therefore, the applicant must select one basis: use in commerce, Trademark Act Section 1(a), OR intent to use the mark in commerce, under Trademark Act Section 1(b), and satisfy the requirements under the selected basis.

 

Please note that although the application was unsigned (see the signature requirements below) this application is presumed to be based upon 1(b) since the filing requirements for that basis are nearly complete.  For purposes of this Office Action, it is presumed that the applicant filed this application based upon an intent to use the mark, rather than actual use.  The specimen is therefore being ignored as evidence of use and only as unrequited evidence of a possible use of the mark. 

 

Nevertheless, as previously required, the applicant must select one basis: use in commerce, Trademark Act Section 1(a), OR intent to use the mark in commerce, under Trademark Act Section 1(b), and satisfy the requirements under the selected basis.

 

3.            Application Unsigned.

 

            The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration by a person who is properly authorized to sign on behalf of the applicant.  That person could be (1) a person with legal authority to bind the applicant; or (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. Section 10.1(c) who has an actual or implied written or verbal power of attorney from the applicant.  37 C.F.R. Section 2.33.  Nevertheless, the signor must attest to the facts set forth in the application, and attesting that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. Sections 2.34(a)(2)(1), (a)(3)(i) and (a)(4)(ii).

 

4.         Special Note Regarding Full Line Requirements.

 

Under certain limited circumstances, an applicant may apply to register a mark as a house mark.  In the case of applications for house marks, the Office has permitted and will permit the use of somewhat broader terms than might otherwise be accepted in an identification of goods.  In such a case, the identification of goods may include wording such as "a house mark for . . ." or "a full line of . . . ."  All such applications must define the type of goods with sufficient particularity to permit proper classification and to enable the Office to make necessary determinations under Trademark Act §2(d), 15 U.S.C. §1052(d).

 

Please note that in an application to register a mark as a house mark based on use in commerce, the Office requires that the applicant demonstrate that the mark is, in fact, used as a house mark, in addition to requiring the usual specimens of use.  The applicant can provide catalogues showing broad use of the mark or similar evidence to substantiate this claim when it files its amendment to allege use or its statement of use after a notice of allowance issues, when the refusal and informalities are resolved.   

 

5.            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).

 

The wording SPORTS in the applicant’s mark is merely descriptive of the applicant’s goods because it describes some of the types of goods that the applicant will sell, namely, sports clothes.  See the applicant’s identification of goods.  The applicant must insert a disclaimer of SPORTS 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 SPORTS apart from the mark as shown.

 

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

 

6.         New Drawing May Be Required:  Mark Embedded in the Application is Stylized.

 

            The applicant did not submit a drawing page of the mark, which is not required for a filing date as long as the mark is clearly delineated within the body of the application.  However, the mark is asserted to appear in stylized form in the application since the applicant states that the mark is not in typed form.  Yet, it appears in typed form. 

 

            If the applicant seeks to register the mark as a typed drawing, the requirements for a typed drawing are as follows:

 

The Office prefers that the drawing be typed on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant's complete name; the applicant's address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.

 

The mark must be typed entirely in capital letters, without spaces between the letters.

 

            37 C.F.R. Sections 2.51 and 2.52; Trademark Manual of Examining Procedure Section 807.06, (3rd Edition January 2002).

 

If the applicant seeks to register the mark as a special form drawing, then the applicant must state this fact for the record and submit specimens that match the mark as it appears in the drawing page. 

 

7.            Responding to this Office Action.

 

            The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  In fact, this examining attorney can not make this recommendation strongly enough.  You would be well served with trademark counsel.  However, please note that the Patent and Trademark Office cannot aid in the selection of an attorney.

 

            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 Examing Attorney

Law Office 105

(703) 308-9105, ext. 131

FAX (703) 746-3021

 

 

 

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.