Offc Action Outgoing

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  76/543515

 

The assigned trademark examining attorney has reviewed the referenced application filed on August 27, 2003, and has determined the following.

 

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.

 

Informalities

 

The applicant must respond to the following informalities in order for the application to proceed.

 

Disclaimer Requirements

 

Applicant must disclaim the descriptive wording “HP” apart from the mark as shown because it merely describes a feature of the mark and means high performing or high powered goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

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

 

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

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

Request for Information

 

The applicant must provide the information requested below pursuant to the authority granted the examining attorney by 37 C.F.R. §2.61(b).  The applicant must directly answer the following question(s):

 

Does HP have any significance as applied to the goods other than trademark significance?

 

Does HP have any significance in the relevant trade or industry other than trademark significance?

 

The applicant must also submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must submit a photograph of the goods/services and describe their nature, purpose and channels of trade.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d). 

 

Please note that failure to comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application.  In re DTI Partnership, L.L.P., Serial No. 76/197,868, slip op. (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

 

 

 

/William T. Verhosek/

Examining Atty/LO 114

703-308-9114x142

(Fax) 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 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.