UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/554887

 

Third Action

 

This letter responds to the applicant's communication filed on January 5, 2006.

 

The examining attorney maintains the Section 2(e)(1) refusal.

 

REFUSAL OF REGISTRATION:  AMENDMENT TO SUPPLEMENTAL REGISTER PREMATURE

 

Registration is refused on the Supplemental Register on the ground that the proposed mark is not in lawful use in commerce.  Trademark Act Section 23, 15 U.S.C. §1091.  Amendment to the Supplemental Register is unacceptable because this application is based on applicant’s bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and applicant has not yet submitted an amendment to allege use under 37 C.F.R. §2.76.  37 C.F.R. §§2.47(d) and 2.75(b); TMEP §1102.03.

 

The trademark examining attorney will withdraw this refusal if applicant submits an amendment to allege use that meets the minimum filing requirements of 37 C.F.R. §2.76(e).  If applicant does not delete the amendment to the Supplemental Register and submits an amendment to allege use in response to this refusal, then the Office will consider the filing date of the amendment to allege use to be the effective filing date of the application, and the trademark examining attorney will conduct a new search of Office records for conflicting marks.  37 C.F.R. §2.75(b); TMEP §§206.01 and 1102.03.

 

If the applicant amends to the Supplemental Register, the applicant must insert a disclaimer of READER in the application because it is generic for the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).  Please see the attached definition of READER from www.encarta.msn.com.

 

A properly worded disclaimer should read as follows:

 

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

 

RESPONSE

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 

 

/Kim Saito/

Examining Attorney, Law Office 102

571-272-9214

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

For inquiries or questions about this office action, please contact the assigned examining attorney.