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  76/546423

 

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

EARLIER FILED APPLICATION – POTENTIAL BASIS FOR REFUSAL OF REGISTRATION

The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.01.  Please note that the examining attorney has found a potentially conflicting pending application. The examining attorney encloses information regarding pending Application Serial No. 76/252917.  The effective filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).  If the referenced application matures into registration, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208.01 and 1208.01(b).

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.

Action on this application will be suspended pending the disposition of the prior pending application, upon receipt of the applicant's response to this office action.

INFORMALITIES

Before the application can be considered further, the following informal issues must be addressed.

CLASS HEADING INDEFINITE

Applicant must clarify the wording used to describe the goods and/or services to indicate the common commercial or generic name for the specific goods and/or services.  Applicant has submitted the class heading for International Class 16 as the identification.  The purpose of the class heading is to indicate the subject matter and general scope of the class and is considered too broad for identifying goods or services in U.S. applications.  TMEP §§1401.08, 1402.01 and 1402.01(a).  Note that the following listed goods in applicant’s identification of goods  are acceptable:  book binding material; photographs; stationery; adhesives for stationery or household purposes; paint brushes; typewriters; printers' type; printing blocks.

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

RESPONSE

If the applicant has particular questions regarding any of the issues set forth in this Office action, the applicant may telephone the assigned examining attorney.

FAILURE TO RESPOND -- ABANDONMENT OF SPECIFIC GOODS

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; artists' materials; office requisites (except furniture).  The application will then proceed forward for the remaining goods:  book binding material; photographs; adhesives for stationery or household purposes; paint brushes; typewriters; printers' type; printing blocks.

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 198

fax: (703) 746-8108

 

 

 

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

 

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