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  76/565013

 

This letter responds to the applicant’s communication filed on September 16, 2004.

 

The applicant (1) amended the identification of goods in International Class 17; (2) failed to respond to the request for information; and (3) argued against any refusal of potential refusal under Section 2(d).

 

No. (3) is acceptable and the refusal under Section 2(d) as to Registration Nos. 0078690, 0992304, 1248298, 1264251, 2116210 and 2555489 is WITHDRAWN.  Moreover, the reference to a potential additional refusal under Section 2(d) as to prior pending Application Serial No. 78/298447 is WITHDRAWN.

 

Final Requirement – Identification and Classification of Goods

 

The following requirement is made FINAL.

 

The applicant’s original identification of goods was found to be unacceptable because it identified goods that may be classified in several international classes.  The applicant’s amended identification of goods is unacceptable for the same reason.

 

The applicant has classified “commercial plastic compost bags” in International Class 17.  The correct classification is International Class 16.  See attached excerpt taken from Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  The applicant must either delete these goods or add International Class International Class 16 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

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.  

 

If the applicant amends the application to add International Class 16, the applicant may adopt the following identification of goods in that class, if accurate:  Commercial plastic compost bags.

 

The remaining portion of the amended identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification in International Class 17, if accurate:  Geo-membrane waterproofing membrane liners; plastic film used to line hydroponic gullies and agricultural tunnels; plastic film for use under mulch, as reflective ground cover and for soil disinfection film; and plastic film used to cover silage.   TMEP §1402.01.

 

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.

 

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://tess2.gov.uspto.report/netahtml/tidm.html.

 

This requirement is made FINAL.

 

Final Requirement – Request for Product Information

 

The following requirement is also made FINAL.

 

In the prior Office action the applicant was required to submit samples of advertisements or promotional materials for goods of the same type.  The applicant failed to comply with this requirement

 

This information is required because the nature of the goods is not clear from the present record and the information is needed in order to allow proper identification and classification of the goods on which the applicant intends to use the mark.

 

The applicant must therefore submit samples of advertisements or promotional materials for goods of the same type.  If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

This requirement is made FINAL.

 

Proper Response to Final Refusal

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.  To reach the undersigned attorney by telephone after October 27, 2004, please call (571) 272 - 9236.  The fax number for Law Office 113 after October 27, 2004 will be (571) 273-9113.  Thank you.

 

 

 

 

/Julie A. Watson/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ex. 210

(703) - 746-8113 (fax)

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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