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. 

 

 

The assigned trademark examining attorney has reviewed the referenced application filed on March 11, 2004, and has determined the following:

 

Request for Amended Filing Receipt

On April 12, 2004, applicant submitted a request for corrected filing receipt based on two perceived errors:  (1) applicant indicated that the filing receipt incorrectly stated that the mark was “stylized” and (2) applicant disagreed with the assigned filing date.  With respect to the first issue, applicant should note that the Trademark Rules pertaining to drawings were amended on November 2, 2003.  Exam Guide 01-03, section I.A.9.  A standard character claim is required for all applications in which no stylization or design elements (i.e., special form) are claimed.  See below for the requirement with respect to the drawing of the mark.  As to the filing date issue, applicant should note that the Express Mail procedures also changed, effective June 24, 2002.  The relevant portion from the Tradmark Manual of Examining Procedure (“TMEP”) is excerpted below for applicant’s convenience.  The March 11, 2004 filing date is correct and stands on the record.

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods

The wording “alcoholic beverages” in the identification of goods needs clarification because it is broad on its own.  Applicant may change this wording to “alcoholic beverages, NAMELY,” if accurate and then list the other goods that properly belong in this class, such as tequila and alcoholic beverages produced from a brewed malt base WITH NATURAL FLAVORS.  TMEP §1402.01.  In addition, malt-based beverages in the nature of beer are in Class 32. 

 

The applicant may find the  Trademark Acceptable Identification of Goods and Services Manual useful in composing the description in this case.  That manual can be found at:  www.gov.uspto.report/web/offices/tac/doc/gsmanual/ 

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

If applicant should fail to respond to this Office action within the six month time limit, then the goods/services noted as still indefinite will be deleted from the application.  The application will then proceed forward for the remaining goods/services.  37 C.F.R. §2.65(a).

 

Combined Applications

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 may identify goods and/or services that are classified in at least two 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.

 

Drawing

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).

 

Translation

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  In the present case, the wording “CINCO DE MAYO” needs translating for the record.  The following translation statement is suggested:  “The English translation of the words CINCO DE MAYO is FIFTH OF MAY.”

 

 

 

 

 

 

 

/Heather D. Thompson/

Trademark Examining Attorney

Law Office 103

voice:  703.308.9103 ext. 223

fax:     703.746.6259

heather.thompson1@uspto.gov

 

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.

 

My Law Office will move on 10/19/04.  To reach me by phone after that date call (571) 272-9287. 

 

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.

 

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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.

 

 

305.03 “Express Mail” [R-2]

Section 1.10 Filing of correspondence by “Express Mail.”

(a) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS, except for documents described in the following paragraphs (a)(1)(i) and (ii) of this section:

(i) trademark applications filed under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 and 1126.

(ii) other documents for which a Trademark Electronic Application System (TEAS) form exists:

(A) amendment to allege use under section 1(c) of the Trademark Act, 15 U.S.C. 1051(c);

(B) statement of use under section 1(d) of the Trademark Act, 15 U.S.C. 1051(d);

(C) request for extension of time to file a statement of use under section 1(d) of the Trademark Act, 15 U.S.C. 1051(d);

(D) affidavit of continued use under section 8 of the Trademark Act, 15 U.S.C. 1058;

(E) renewal request under section 9 of the Trademark Act, 15 U.S.C. 1059; and

(F) requests to change or correct addresses.

(2) The date of deposit with USPS is shown by the "date in" on the "Express Mail" label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).

(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.

(c) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail;” and

(3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.

(d) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”; and

(3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.

(e) Any person mailing correspondence addressed as set out in §1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;

(3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day; and

(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS.

(f) The Office may require additional evidence to determine if the correspondence was deposited as “Express Mail” with the USPS on the date in question.

Patent and Trademark Rule 1.10, 37 C.F.R. §1.10, provides a procedure for obtaining a filing date as of the date that correspondence is deposited as "Express Mail" with the United States Postal Service (USPS). However, effective June 24, 2002, 37 C.F.R. §1.10(a) has been amended. This procedure no longer applies to the following trademark documents:

·         trademark applications filed under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126;

·         amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c);

·         statements of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);

·         requests for extension of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);

·         affidavits of continued use under §8 of the Trademark Act, 15 U.S.C. §1058;

·         renewal applications under §9 of the Trademark Act, 15 U.S.C. §1059;

·         requests to change or correct addresses;

·         combined filings under §§8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059; and

·         combined affidavits or declarations under §§8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065.

See notice at 67 Fed. Reg. 36099 (May 23, 2002), available at http://www.gov.uspto.report/web/offices/com/sol/notices/expmailrule2.pdf.

If the documents listed above are filed by Express Mail, they will receive a filing date as of the date of receipt in the Office and not the date of deposit with USPS. 37 C.F.R. §1.6(a). Under 37 C.F.R. §§1.6(a)(1) and (3), no correspondence is "received" in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia. See TMEP §§303.01 and 308.

If the documents are filed electronically through TEAS (http://www.gov.uspto.report/teas/index.html), they will receive a filing date as of the date the Office receives the transmission (Eastern Standard Time), regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §1.6(a)(4). When a document is filed electronically, the Office receives it within seconds after filing, and immediately issues a confirmation of filing via e-mail that includes the date of receipt and a summary of the submission. This confirmation is evidence of filing should any question arise as to the filing date of the document. See TMEP 301 for further information about TEAS.

As the Office develops and tests additional TEAS forms, the Office will amend 37 C.F.R. §1.10(a) to specify additional documents that are excluded from the benefits of the rule. In addition to publishing such rule amendments in the Federal Register, the Office will post them on its website. Members of the public may access the Rules of Practice on the Office's website at http://www.gov.uspto.report/web/offices/tac/tmlaw2.html to determine which documents are excluded.