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  76/558732

 

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

 

Search Results

 

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.

 

Identification of Goods/Services

 

The wording “photocopier toner contained in bottles and cartridges, photocopying  toner in cartridges for printers, computer printers, photocopying apparatus and facsilmile machines; toner for offset printing; toner ink for copying apparatus and machines; cartridges filled with toner and ink; cartridges filled with toner and ink for computer printers, dot matrix printers, laser printers, photocopying machines, electrostatic photocopiers, photographic photocopiers, thermal photocopiers, electronically operated printing apparatus and facsimile machines, toner and ink for photocopiers,  printers, off-set printing machines and facsimile machines; laser toner cartridges filled with toner for computer printers; filled laser toner  cartridges; printing ink; printers’ ink; engraving ink; printer’s ink and toner for printing on paper, transparencies and textiles; filled ink cartridges; ink jet refills; pigments; color pigments; carbon black pigments; titanium dioxide used as a color pigment; colorants for use in the manufacture of printing ink; dyes for use in the manufacture of engraving ink; dyes for use in the manufacture of engraving ink; and fixatives for water colors; computers peripherals; printers for use with computers and data processing apparatus; computer printers; ink jet printers for use with computers; ink jet printers for use with data processing apparatus; printers incorporating lasers; computer mice; computer mouse pads; computer keyboards; computer monitors; computer screen filters for monitors; printed circuits; integrated circuits; computer storage media, namely, computer hard disks, CD-ROM's, DVD-Rs and floppy disks; blank data storage discs; magnetic data carriers; blank magnetic discs and tapes; blank recording discs; blank floppy discs; blank disc files; blank disc memories; blank discs for recording and storing data; blank computer discs. read only memory compact discs; recordable blank compact discs; writable blank compact discs; blank optical discs; blank digital video discs; recordable blank digital video discs; writeable blank digital video discs; blank video compact discs; computer cartridges adapted for use with data carriers; integrated circuit chips used in computer printers, toner cartridges and ink jet cartridges; computer cartridge holders; computer cleaning tissues; computer cleaners; empty toner cartridges; empty toner cartridges for use with computers, computer printers, photocopiers, electrostatic photocopiers, photographic photocopiers, thermic photocopiers, printers, electronically operated printing machines, dot matrix printers and laser printers; empty toner cartridges for use with office machines and printing machines; and paper trays” in the recitation of services is too broad because it could include services classified in other classes.  The applicant may amend the identification to substitute the following wording, if accurate:  Photocopier toner contained in bottles and cartridges, photocopying  toner in cartridges for printers, computer printers, photocopying apparatus and facsilmile machines; toner for offset printing; toner ink for copying apparatus and machines; cartridges filled with toner and ink; cartridges filled with toner and ink for computer printers, dot matrix printers, laser printers, photocopying machines, electrostatic photocopiers, photographic photocopiers, thermal photocopiers, electronically operated printing apparatus and facsimile machines, toner and ink for photocopiers,  printers, off-set printing machines and facsimile machines; laser toner cartridges filled with toner for computer printers; filled laser toner  cartridges; printing ink; printers’ ink; engraving ink; printer’s ink and toner for printing on paper, transparencies and textiles; filled ink cartridges; ink jet refills; pigments; color pigments; carbon black pigments; titanium dioxide used as a color pigment; colorants for use in the manufacture of printing ink; dyes for use in the manufacture of engraving ink; dyes for use in the manufacture of engraving ink; and fixatives for water colors, Int. Cl. 2; Computers peripherals; printers for use with computers and data processing apparatus; computer printers; ink jet printers for use with computers; ink jet printers for use with data processing apparatus; printers incorporating lasers; computer mice; computer mouse pads; computer keyboards; computer monitors; computer screen filters for monitors; printed circuits; integrated circuits; computer storage media, namely, computer hard disks, CD-ROM's, DVD-Rs and floppy disks; blank data storage discs; magnetic data carriers; blank magnetic discs and tapes; blank recording discs; blank floppy discs; blank disc files; blank disc memories; blank discs for recording and storing data; blank computer discs. read only memory compact discs; recordable blank compact discs; writable blank compact discs; blank optical discs; blank digital video discs; recordable blank digital video discs; writeable blank digital video discs; blank video compact discs; computer cartridges adapted for use with data carriers; integrated circuit chips used in computer printers, toner cartridges and ink jet cartridges; computer cartridge holders; computer cleaning tissues; computer cleaners; empty toner cartridges; empty toner cartridges for use with computers, computer printers, photocopiers, electrostatic photocopiers, photographic photocopiers, thermic photocopiers, printers, electronically operated printing machines, dot matrix printers and laser printers; empty toner cartridges for use with office machines and printing machines, Int. Cl. 9; Paper trays, Int. Cl. 16. TMEP §1402.11.

 

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.

 

Combined Applications

 

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 3 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.

 

The following additional requirements are made depending on whether the basis for application is Section 1(b), Section 1(a) and/or Section 44..

 

If application is based on Section 1(b) or Section 44

 

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.

 

If application is based on Section 1(b)

 

If the applicant adds any classes, the applicant must submit a specimen showing use of the mark in each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  The applicant must verify that the new specimen was in use in commerce on or before the application filing date with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a).  See note below regarding specimen.

 

The applicant must amend the application to include dates of first use and use in commerce for each class.  37 C.F.R. §2.86(a); TMEP §1403.01.  If the dates differ from those already of record, the applicant must verify the amendment with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

Basis for Filing

 

The applicant has not indicated the basis for the application or met any of the requirements for a filing basis.  An application may be filed based on any of the following:

 

(1)  use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

 

(2)  a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

 

(3)  a claim of priority, based on an earlier‑filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));

 

(4)  registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)). 

 

The applicant must specify at least one basis for filing and the applicant must submit all of the requirements for the basis asserted.  TMEP §806.  Depending on the circumstances, the applicant may be entitled to assert more than one basis for filing.  In such a case, the applicant must:  (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. §2.34; TMEP §§806.02 et seq.

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

To base the application on the applicant’s use of the mark in commerce the applicant must submit the following:

 

(1)  A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;

 

(2)  The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;

 

(3)  The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and

 

(4)  One specimen for each class, showing how the applicant actually uses the mark in commerce.  If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date.

 

These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).

 

To base the application on a foreign application for the same mark and the same goods or services, the applicant must: 

 

(1)  File a claim of priority within six months of the filing date of the foreign application. 

 

(2)  Specify the filing date and country of the first regularly filed foreign application; or state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.

 

(3)  Submit the following statement:  “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.”  The statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.

 

Trademark Act Section 44(d), 15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c).

 

For an application based on a foreign registration, the applicant must submit:

 

(1)  A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002 et seq. and 1004.01 et seq.

 

(2)  An English translation if the foreign certificate of registration is not written in English.  The translator should sign the translation.  TMEP §1004.01(b). 

 

(3)  The following statement:  “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services since the application filing date.”  The statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.

 

Trademark Act Section 44(e), 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3);  TMEP §806.01(d).

 

 

Drawing

 

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it has small black dots that do not appear to be a part of the mark. and it will not reproduce satisfactorily.  TMEP §807.07(a). For applicant’s convenience, the examining attorney has attached a copy of the drawing of record.

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new special form drawing rules or the special form drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.B.6.

 

Declaration

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  This electronically transmitted application does not comply with the signature rules set forth in 37 C.F.R. §2.33, reproduced in relevant part below.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. Section 2.34(a)(1)(i).

 

2.33

 

(d) Where an electronically transmitted filing is permitted, the person who signs the verified statement must either:

(1)   Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission (emphasis added); and print, sign and date in permanent ink, and maintain a paper copy of the electronic submission; or

 

(2)  Sign the verified statement using some other form of electronic signature specified by the Commissioner.

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a)[1].

 

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in application as of the application filing date; or, if the application is being filed under  15 U.S.C.  Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce,  that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

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

 

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

(703) 308-9110 Ext. 423

 

 

 

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.