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  76/560837

 

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

 

Search Results

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Amendment to Punctuation in Identification of Goods is Required

 

The punctuation in the identification of goods must be amended by deleting the semicolon appearing after the term “APPLIANCES” and substituting a comma in its place.  As such, the amended statement of goods would reads as follows:  Orthopedic appliances, namely, cervical collars in International Class 10.

 

Please also 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. Section 2.71(b). Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.  In addition, once an item has been deleted from an identification of goods or recitation of services, it normally cannot be reinserted.

 

Disclaimer of the Term KIDS is Required

 

Under the terms of  Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), an applicant may be required to  disclaim an element of a mark that is merely descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

 

In the instant case, the Applicant seeks registration of the terms NecLoc Kids & Design for “orthopedic appliances, namely, cervical collars in International Class 10.”  Per the specimen submitted with the application, the devices sold under the subject mark were/are “Designed for Kids!”  Accordingly, the term KIDS as used in the mark merely describes a salient feature of the goods offered under the mark and, as such, “KIDS” must be disclaimed apart from the mark as a whole.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1213.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:  No claim is made to the exclusive right to use the term KIDS, apart from the mark as shown.

 

Statement of Ownership of Prior Registrations is Required

 

If the applicant is the owner of Registration Nos. 1381192 and 1458202, the applicant must submit a claim of ownership of the same for the record here.  37 C.F.R. §2.36; TMEP §812.

 

 

/Barbara Loughran/

Trademark Examining Attorney

Law Office 113

(703) 308-9113  ext 208

email: Barbara.Loughran@uspto.gov (for informal

      correspondence only)

 

 

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.