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  76/553358

 

The assigned examining attorney has reviewed the 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.

 

Multi-Class Application

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least 2 international classes, however applicant paid the fee for only 1 class(es).

 

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 §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Classification and Identification of Goods

The applicant has classified the goods incorrectly.  Nachos, tacos, fajitas, burritos, tortillas and enchiladas are classified in International Class 30. The applicant must amend the application to classify the goods in International Class 30.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The term "kit" in the identification of goods needs clarification. Applicant must amend this wording to include a description of both the major components of the kit and the main purpose of the kit.  In general, kits are classified in accordance with the major components.  An acceptable identification would read:  Kits consisting primarily of {indicate components for use {indicate use}.  TMEP §§1401.05, 1402.01 and 1402.03.

 

The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.

 

For assistance with identifying goods and/or services in trademark applications, please see the online 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, if accurate:

 

• Dinner kits comprised primarily of peanut butter. (Class 29).
• Dinner kits comprised primarily of nachos; Dinner kits comprised primarily of tacos; Dinner kits comprised primarily of fajitas; Dinner kits comprised primarily of burritos; Dinner kits comprised primarily of enchiladas; dinner kits comprised primarily of tortillas, jelly and peanut butter. (Class 30).

 

TMEP §1402.01.

 

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 list the goods/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(a); 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.  

 

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.

 

Prior Registration

The records of the Office indicate that the applicant is the owner of a prior registration for the same mark.  Please see the attached Office record.  If the applicant is the owner of this registration, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36; TMEP section 812.  The applicant may adopt the following, if accurate:

 

·      The applicant is the owner of Registration No. 2034371.

 

Translation of Foreign Wording

The applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. Section 2.61(b); TMEP section 809.  The applicant may adopt the following if accurate:  The English translation of the wording CASA DE ORO in the mark is HOUSE OF GOLD.

 

Conclusion

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 and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

If the applicant has any questions about the Office Action, please contact the assigned examining attorney.

/Linda M. Estrada/

Trademark Attorney, Law Office 105

(703) 308-9105, ext. 242

(703) 872-9825 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.