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  76/575581

 

The assigned trademark examining attorney has reviewed the referenced application filed on February 17, 2004, and has 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.

 

STANDARD CHARACTER CLAIM REQUIRED

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.    Exam Guide 01-03, section I.A.9.  Applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

 

DISCLAIMER

Applicant must insert a disclaimer of THREADS in the application because it is merely descriptive of textile items, such as clothing, wall hangings, blankets, pillows, and the like, made of “threads.”  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).  The examining attorney has attached six sample registrations from the Office’s database of registered marks wherein this term was disclaimed, registered under Section 2(f) or on the Supplemental Register for related goods.  The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “THREADS” apart from the mark as shown.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

GOODS

The identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  TMEP §§1402.01 and 1402.03.  The wording "wall hangings and blankets" in the identification of goods needs clarification because the applicant must state the intended use and material composition of these goods.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  Applicant must also classify the goods accordingly.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  The applicant may amend to any or all of the following, as may be accurate:

 

Class 20:                        pillows

 

Class 24:                        bed blankets; textile wall hangings

 

Class 25:                        T-shirts

 

Class 27:                        non-textile wall hangings and/or tapestry-style wall hangings, not of textile

 

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 §§1402.01 and 1402.03(a).  Therefore, the applicant may only amend to include those goods or services that are within the scope of the goods and services recited in the present identification.  For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Note that the applicant may not use the indefinite wording “and/or,” “or,” or “etc.” in its identification of goods/services.  The applicant must use the more definite word “and” when listing more than one item.  The applicant may not use parentheticals in its description of goods/services.  The examining attorney used them above merely to indicate wording that requires further amendment.

 

COMBINED CLASS RULES

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 four international classes, however applicant paid the fee for only one 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.  If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on <an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e)>:

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

 

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 18, 2004, please call (571) 272 - 9181.  Thank you.

 

/egkon/

Elissa Garber Kon, Law Office 116

Phone:  (703) 306-7917

Fax:      (703) 746-8116

Email:    elissagarber.kon@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.