UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/576517
APPLICANT: Hopkinsville Milling Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: SUNFLOWER
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/576517
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
The goods have been classified in International Class 029. The correct classification is International Class 030. The applicant must amend the application to classify the goods in International Class 030. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
Applicant must submit the following: (1) a statement that “the color(s) <specify> <is/are> claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>.” 37 C.F.R. §2.52(b)(1). Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. Exam Guide 01-03, section I.B.1.
Applicant may adopt the following statement, if accurate: The mark consists of the word sunflower in orange font and two yellow and orange sunflowers. Color is claimed as a distinctive feature of the mark.
Under the goods and services section of the applicant the application contains the following statement “No claim is made to the exclusive right to use “white and yellow corn meal mix and quick grits” apart from the mark as shown.”
In a trademark application or registration, a disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark. A disclaimer may be included in an application as filed or may be added by amendment, e.g., to comply with a requirement by the examining attorney. The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant’s right with respect to certain elements in the mark. As stated in Horlick’s Malted Milk Co. v. Borden Co., 295 F. 232, 234, 1924 C.D. 197, 199 (D.C. Cir. 1924):
In this case, the disclaimer of the goods and services is unacceptable. A disclaimer is not necessary in this application, and therefore, the applicant must expressly delete the disclaimer statement.
An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b), by the person who is entitled to use the mark in commerce. Normally the owner of a mark is the person who applies the mark to goods produced by him or uses the mark in the sale or advertising of services performed by him. See TMEP §§1201 et seq. regarding ownership, and TMEP §§501 and 502 et seq. regarding changes of ownership. TMEP §803.01. In this case, the applicant has referred to the owner in the cover letter submitted with the application, however, the owner’s name does not appear in the body of the application. Therefore, the applicant must confirm the name of the owner of the mark (i.e. Hopkinsville Milling Company).
Response Guidelines
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
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.
/Toni Y Hickey/
Trademark Examining Attorney
Phone (703) 308-9115 X134
Phone effective 10/21/04 (571) 273-9475
Fax (703) 872-9229
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.