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  76/547460

 

The assigned trademark examining attorney has reviewed the referenced application filed on September 15, 2003, and has determined the following.

 

Search Results

Information is enclosed concerning pending Application Serial No. 78192210.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier-filed application registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.

 

Identification of Goods

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

The wording “and parts therefor” in the identification of goods needs clarification because the parts could be goods not in class 6; for example, remote controls for fences in class 9.  Applicant may change the classification and identification of goods to the following, if accurate:

 

Class 6:                        Metal fences and gates, and structural parts therefor;

 

Class 9:                        Remote control units for fences and gates;

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Multiple Classes

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of  goods not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.   The applicant has already paid for 1 international class. 

 

Request for Information

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990) (failure to submit patent information regarding configuration).

 

Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods because the nature of the goods on which applicant intends to use its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application.  The applicant must explain whether the goods contain computer chips or other “smart” technology.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Disclaimer Required

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

 

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).   A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

The applicant must insert a disclaimer of FENCE in the application.  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 “FENCE” apart from the mark as shown.

 

/rscb/

Robin Chosid-Brown

Trademark Examining Attorney

Law Office 102

(703) 308-9102 ext. 204

robin.chosid-brown@uspto.gov

 

 

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.