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  76/574277

 

The assigned examining attorney has reviewed the referenced application as well as the communication filed on March 10, 2004 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.

 

However, before the mark can be published for opposition, the applicant must address the following informalities.

 

Identification and Classification of Goods in International Class 16

 

The nature of the applicant’s “brush pot” is not clear from the present record.  In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must 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).

 

The applicant has classified “photo stand” in International Class 16.  The correct classification is International Class 20.  The applicant must either delete these goods or add International Class 20 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 present application to add International Class 20, the applicant may adopt the following identification of goods in that class, if accurate:  Standing picture frames.

 

The wording “stick” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “ink sticks,” if accurate.  TMEP §1402.01.

 

The wording “card” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “blank cards,” if accurate.  TMEP §1402.01.

 

The wording “memorandum” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “memorandum books,” if accurate.  TMEP §1402.01.

 

The wording “comic” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “comic books,” if accurate.  TMEP §1402.01.

 

The applicant must clarify the identification of goods by indicating the subject matter of its brochures.  TMEP §1402.01.

 

The applicant must clarify the identification of goods by its adhesive tape is for household use.  TMEP §1402.01.

 

The wording “file-holders” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “document file racks,” if accurate.  TMEP §1402.01.

 

The wording “pen tube” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “pens,” if accurate.  TMEP §1402.01.

 

The applicant must clarify the identification of goods by deleting the wording “Trademark”.  TMEP §1402.01.

 

The wording “strip” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “strips of fancy paper,” if accurate.  TMEP §1402.01.

 

The applicant may adopt the following identification of goods in International Class 16, if accurate:  Ink sticks, blank cards, memorandum books, diaries, comic books, brochures about [indicate subject matter], photo albums, note books, posters, calendars, adhesive tape for household use, document file racks, pencils, pens, pen cases, erasers, stickers and strips of fancy paper.

 

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.

 

Description of the Drawing

 

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The following is suggested:

 

The mark consists in part of the stylized wording GOLDEN ARROW.

 

If the applicant has any questions or needs assistance in responding to 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:

 

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