Pat,
I have this Office action in the docketing stack, but we need to report to
the client. Can you prepare a letter?
Tom
> -----Original Message-----
> From: ECom114 [SMTP:ecom114@USPTO.GOV]
> Sent: Tuesday, March 16, 2004 3:52 PM
> To: tbergert@williamsmullen.com
> Subject: TRADEMARK APPLICATION NO. 76545130 - A GIFT FOR YOU UNITED
> COUPON ...SAVINGS ETC. - 031608.0400
>
> UNITED STATES PATENT AND TRADEMARK OFFICE
>
> SERIAL NO: 76/545130
>
> APPLICANT: United Marketing Solutions, Inc.
>
>
>
>
> CORRESPONDENT ADDRESS:
> THOMAS F. BERGERT
> WILLIAMS MULLEN
> 8270 GREENSBORO DR STE 700
> MC LEAN VA 22102-3835
>
> RETURN ADDRESS:
> Commissioner for Trademarks
> 2900 Crystal Drive
> Arlington, VA 22202-3514
>
>
>
>
> MARK: A GIFT FOR YOU UNITED COUPON ...SAVINGS ETC.
>
>
>
> CORRESPONDENT'S REFERENCE/DOCKET NO: 031608.0400
>
> CORRESPONDENT EMAIL ADDRESS:
> tbergert@williamsmullen.com
> 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.
>
>
>
>
> 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 76/545130
>
> The assigned examining attorney has reviewed the referenced application
> and determined the following.
>
> 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). TMEP section
> 1105.01. However, applicant must address the following issue(s).
>
> OWNERSHIP CLAIM
> If the applicant is the owner of Registration No. 1310366, the applicant
> must submit a claim of ownership. 37 C.F.R. Section 2.36; TMEP section
> 812.
>
> DRAWING
> The outline of the envelope is not part of the mark, and the applicant
> should delete this from the drawing. TMEP §§807.04 and 807.15.
>
> Applicant must clarify whether the gray tones in the drawing are intended
> to indicate the color gray.
>
> (1) If the color gray is a feature of the mark, then applicant must
> submit a color claim and description as follows: "The color gray is a
> feature of the mark. The color gray appears in <specify where color gray
> appears>." 37 C.F.R. §§2.52(b) and (b)(1).
>
> (2) If the color gray is intended to indicate shading only, then
> applicant must submit a new drawing showing the mark in black and white
> only, with the gray tones deleted.
>
> The requirements for a special-form drawing are as follows:
>
> (1) The drawing must appear in black and white; no color is permitted.
>
> (2) Every line and letter must be black and clear.
>
> (3) The use of gray to indicate shading is unacceptable.
>
> (4) The lining must not be too fine or too close together.
>
> (5) The preferred size of the area in which the mark is displayed is 2½
> inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be
> larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
>
> (6) If the reduction of the mark to the required size renders any details
> illegible, the applicant may insert a statement in the application to
> describe the mark and these details.
>
> 37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce
> these drawing requirements strictly.
>
> The Office prefers that the drawing be depicted 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.
> 37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).
>
> To submit a special form drawing electronically, applicant must attach a
> digitized image of the mark to the submission. The Office will only
> accept an image in .jpg format. The image must be formatted at no less
> than 300 dots per inch and no more than 350 dots per inch; and with a
> length and width of no less than 250 pixels and no more than 944 pixels.
> All lines in the image must be clean, sharp and solid, and not fine or
> crowded, and produce a high quality image when copied. 37 C.F.R. §2.53.
>
> NOTE: The Trademark Rules pertaining to drawings were amended on November
> 2, 2003. For applications filed prior to November 2, 2003, applicants may
> follow either the new special form drawing rules or the special form
> drawing rules in force prior to their amendment on November 2, 2003. Exam
> Guide 01-03, section I.B.6.
>
> DISCLAIMER
> The applicant must insert a disclaimer of COUPON and SAVINGS ENCLOSED in
> the application because the phrase merely describes to the consumer that
> savings coupons are enclosed in applicant's mailing. Trademark Act
> Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.09(a)(i).
>
> A properly worded disclaimer should read as follows:
>
> No claim is made to the exclusive right to use COUPON and
> SAVINGS ENCLOSED apart from the mark as shown.
>
> Additional information pertaining to trademark application requirements is
> available on-line at the Patent and Trademark Office web-site at
> www.uspto.gov <http://www.gov.uspto.report/>. Current status and status date
> information is available, via touch-tone telephone, for all federal
> trademark registration and application records maintained in the automated
> Trademark Reporting and Monitoring (TRAM) system. The information may be
> accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern
> Standard Time, Monday through Friday.
>
> /john.hwang/
> John C. Hwang
> Trademark Attorney
> Law Office 114
> T) 703-308-9114 ext 206
> F) 703-746-6282
>
>
> 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.
> << File: 73465956P001OF001.JPG >>