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  76/547662

 

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

NO CONFLICTING MARKS NOTED

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. §1052(d).  TMEP §704.02.

 

DISCLAIMER

The applicant must insert a disclaimer of  LEAKPROOF  in the application because it describes a feature of the bags, namely, that they do not leak.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.08(a)(i).  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.

 

A properly worded disclaimer should read as follows:

 

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

 

LINING STATEMENT

The lining shown in the drawing appears to be a feature of the mark and not intended to indicate color.  The applicant must insert a statement to that effect.  37 C.F.R. §2.37; TMEP §807.09(e).

 

IDENTIFICATION OF GOODS

The identification of goods is unacceptable as indefinite.  The applicant must specify the purpose of the bags. 

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the Agency website at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The applicant may adopt the following identification, if accurate: 

 

Leak proof reclosable plastic bags for transmitting medical specimens, in International Class 10; and/or

 

Leak proof reclosable plastic bags for disposing of pet waste, in International Class 16.

 

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. Section 2.71(a); TMEP section 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.

 

MULTI-CLASS APPLICATIONS

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), 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 §1403.01.

 

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

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The specimen is acceptable for both classes.  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

TELEPHONE CALL SUGGESTED

PLEASE NOTE:                        All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application. 

 

RESPONSE GUIDELINES

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 in writing and request that the Office enter them.  Even if the adopted changes are taken directly from the suggestion in the office action [e.g. a change in the identification of goods and services], the applicant should put any desired changes into a written response.  This will allow the Office to enter the changes upon receipt of the applicant’s response and speed processing of any amendments to the application. The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, 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.

 

To ensure that its response is considered timely, applicant may wish to add the following completed “certificate of mailing” to the end of its response.  Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced.  See TMEP §§305.02 et seq.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514, on the date below.

 

________________________________________________

(Typed or Printed Name of Person Signing Certificate)

________________________________________________

(Signature)

________________________________________________

(Date)

The certificate of mailing procedure does not apply to the initial filing of trademark applications.  37 C.F.R. §2.197(a)(2).

 

 

 

 

 

 

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 Ext. 135 Phone

(703) 746-6485 Fax

 

 

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.