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  76/556310

 

This letter responds to the applicant's communication filed on February 20, 2007.

 

Based upon the consent agreement, the refusal under Section 2(d) is withdrawn.

 

However, the color drawing does not clearly show all the colors yellow, orange and red, and the color claim does not reference the colors black and white.

 

COLOR DRAWING AND COLOR CLAIM/LOCATION

The color claim and/or color location statement disagree with the colors depicted in the mark shown on the drawing.  The color claim specifies yellow, orange and red; however, since the drawing page is not in sufficient detail to clearly show three colors yellow, orange and red.  The color drawing, color claim and location statement must agree.  37 C.F.R. §2.52(b)(1); TMEP §807.07(c).

 

Therefore, applicant must a clear color drawing that agrees with the color claim and location statement.  The examining attorney suggests a clear jpg drawing submitted via TEAS.

 

The color claim and location statement must identify all the colors in the mark on the drawing, including black and white.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Therefore, applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). 

 

The following color claim and color location statement are suggested:

 

The color(s) black, white, yellow, orange and red are claimed as a feature of the mark.

 

The term “MENARDS” appears in the colors black and white, and the "swish" design appears in the colors yellow, orange and red

 

If applicant submits a substitute drawing, applicant is advised that amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.

 

RECITATION OF SERVICES

The recitation of services must be clarified by replacing all “semicolons” with “commas.”  TMEP §1402.01. 

 

The applicant may adopt the following recitation of services, if accurate:

 

Retail store services in the fields of building materials, electrical products, floor coverings, hardware, lighting, lumber, millwork, plumbing, roofing materials, wall coverings, appliances, home maintenance and improvement products, home furnishings, house wares, lawn care products, outside living, clothing, namely, gloves, jackets, socks, and tee-shirts, footwear, hats, infant and toddler products, beverages, snack foods, condiments, seasonings, spices, barbeque sauces, hot pepper sauces, and marinade, in International Class 35.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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

 

 

 

 

Scott Baldwin /sb/

Trademark Attorney

Law Office: 117

571-272-9398

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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