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  76/547995

 

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. Section 1052(d).  TMEP section 704.01.

 

Services Indefinite

The recitation of services is unacceptable as indefinite. The applicant must state the specific services provided by the common commercial name for these services. The terms “tendering” and “quoting” must be specified must be specified. The examining attorney believes that the “tendering” is most likely some type of distributorship and/or delivery service based on the specimens submitted. The “quoting” is most likely a business service, but could also be considered a financial service in Int. Cl. 36. The applicant may have identified services that fall into more than one International Class at a greater cost to the applicant. For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The applicant may adopt the following recitation, if accurate:  TMEP §1402.11.

 

Export and import agencies; tendering for local and foreign companies, namely [specify, e.g. wholesale distributorships featuring thermometers]; goods or services price quotations for local an foreign companies in Int. Cl. 35.

 

Commodity quotations for local and foreign companies in Int. Cl. 36.

 

Delivery of goods by truck and air for the purpose of tendering thermometers in Int. Cl. 39.

 

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 services that are not within the scope of the services recited 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 services in each class and list the services 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 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).

 

Please note that the submitted specimens support the services in all three classes. Additional specimens will not be necessary.

 

Lining in Drawing Must Be Explained

Applicant must explain the purpose of the lining pattern that appears in the drawing of the mark because it is not clear whether the lining pattern is a feature of the mark, merely intended to indicate shading, or intended to indicate color.

 

(1)   If the lining pattern in the drawing is a feature of the mark, then applicant must submit the following statement:  “The lining shown in the drawing is a feature of the mark.”  TMEP §807.09(e).

 

(2)   If the lining pattern indicates shading, then applicant must submit the following statement:  “The lining shown in the mark is to indicate shading.”  TMEP §807.09(e).

 

(3)   If the lining pattern in the drawing is to indicate color, then applicant must do one of the following:

 

(a)   submit a statement that “the color(s) <specify> are claimed as a feature of the mark,” and a separate statement describing where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>;” or

(b)   submit a color drawing with a statement that “the color(s) <specify> are claimed as a feature of the mark” and a separate statement describing where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>.”  37 C.F.R. §2.52(b)(1); Exam Guide 01-03, section I.B.1.; See TMEP §807.09(e).

 

The examining attorney believes that the applicant did in fact intend to claim color by looking at the specimens where the mark appears in orange and green. Please follow number (3) above if this is the case.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

                                                                        /srb/

Steven R. Berk

Examining Attorney

Law Office 102

(703) 308-9102x210

fax: (703) 746-8102

 

 

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.