UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION / ELECTRONIC MAIL

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  You may respond via regular mail to the address listed above, or via e-mail to the e-mail address listed below.  In the body of the response, please clearly state the applicant’s name, mark, serial number, Law Office and Examining Attorney.  Also, e-mail responses must (1) include the entire response as e-mail text, not as an attachment; (2) list the serial number in the “Subject” line; (3) be signed electronically (using the same format accepted for electronically filed applications - the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable “signatures” could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); (4) include any attachments, specimens or evidence in JPG or GIF format only, and (5) address every issue raised.

e-mail address for formal responses: <http://tarr.gov.uspto.report/>

 

 

 

Serial Number  76/571248

 

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

 

Office Records Searched

 

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. Section 1052(d).  TMEP section 1105.01.

 

However, the applicant should note the following informality:

 

Identification Does Not Specify Actual Goods or Services – Application Appears VOID

 

Registration is refused and the application appears to be void because the goods and services specified in the identification do not appear to be those on or in connection with which the applicant has a bona fide intention to use the mark.  37 C.F.R. Section 2.32(a)(6).  Rather, the wording set forth in the identification appears to describe the method or manner in which the applicant intends to use the mark. 

 

“Services” must be provided for the benefit of others. The applicant’s recitation of services seems to refer to services in which the applicant engages only for the benefit of its own products. The following criteria have evolved for determining what constitutes a service in connection with which a mark may be registered:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) a service cannot be merely an ancillary activity or one which is necessary to the applicant's larger business (i.e., the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service).  In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).  TMEP Section 1301.01(a). It is unclear whether the applicant's services are provided for the benefit of others or only for its own benefit. Similarly, “clothing hang tags” do not seem to be the applicant’s goods in trade. That is, the “hang tags” seem to be the item on which the asserted mark is placed, and then the hangtags are attached to the goods for which the applicant seeks protection.

 

Of course, the applicant is entitled to submit a specimen showing use of the mark for the goods and services now identified.  However, no additions to the identification are permitted.  37 C.F.R. Section 2.71(a); TMEP section 1402.01.  Therefore, if the applicant continues to prosecute this application, registration may be sought only for goods and services within the scope of the identification of record, namely, “Hang tags, in International Class 16” and  “Business marketing; Preparing promotional and merchandising material for others; Advertising and promotion services and related consulting for the benefit of others, in International Class 35.”

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or services set forth in the present identification.

 

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.  

 

For your convenience, acceptable identifications of goods and services are available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html.

 

For Your Information

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enters them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

To avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.

                                                                                                                                    (Date)

 

_______________________________________________________________________

(Signature)

 

_______________________________________________________________________

(Typed or printed name of the person signing the certificate)

 

The certificate-of-mailing procedure does not apply to the filing of trademark applications.

 

For your convenience, current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call. Also, applicants may retrieve information about pending and registered trademarks from the USPTO’s database by simply entering a valid trademark serial number or registration number at:  http://tarr.uspto.gov. Additionally, applicants may contact the Trademark Assistance Center at:  703-308-9000.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

 

Applicants should note that they may now file changes of correspondence address via a new form on TEAS.   Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form that is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

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

 

Change in USPTO Trademark Contact Information

 

The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004.  During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .

 

Effective October 4, 2004, all Trademark-related paper mail must be sent to:

 

                        Commissioner for Trademarks

                        P.O. Box 1451

                        Alexandria, VA  22313-1451

 

My Law Office will move on 10/19/04.  To reach me by phone after that date call (571) 272-9268. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.

 

ONCE AGAIN, PLEASE NOTE:  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.

 

___________________________________________

/Ronald E. Aikens/

Trademark Attorney, Law Off. 103

Tel: 703.308.9103x128; Fax: 703.746.8103

Ron.Aikens@USPTO.gov

 

 

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.