UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/587180
APPLICANT: The Broaster Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BRO-OIL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 31427-021.20
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 76/587180
The assigned examining attorney has reviewed the referenced application and determined the following:
NO LIKELIHOOD OF CONFUSION WITH CURRENT REGISTRATIONS OR PRIOR PENDING APPLICATIONS
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, before the application can proceed, the applicant must address the following informalities:
INFORMALITIES
The applicant may in some cases submit a claim of ownership of prior registrations which will be printed on any certificate of registration that may issue from a given application. 37 C.F.R. §2.36; TMEP §812.
The applicant has submitted a claim of ownership of Ser. No. 78/239003, a copending application owned by the applicant. This claim of ownership is inappropriate because it refers to an application, not a registration. Claims of ownership are only appropriate for registrations. Therefore, no reference to Ser. No. 78/239003 will be made on any certificate of registration that may issue from this application.
The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods. TMEP Sections 814, 1209. The applicant must provide product information for the goods. This may take the form of a fact sheet, instruction manuals, or advertisement. If this information is unavailable, the applicant should submit information for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.
In all cases, the submitted factual information must make clear how the goods operate, their salient features, and their prospective customer and/or channel of trade. This information is not readily available to the examining attorney and is pertinent to the descriptiveness determination. Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.
In addition, the applicant must state whether the mark has any meaning in relation to the goods. 37 C.F.R. Section 2.61(b); TMEP Section 814. Likewise, the applicant must enter into the record answers to the following questions:
If the requested information is confidential and the applicant does not wish to have literature containing the information become part of a public record, the applicant should explain those circumstances. Placing confidential information in a file is not required. TMEP Section 814.
Please note, Trademark Rule 2.61(b) states “The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.” Moreover, the examining attorney has an affirmative duty to seek out information necessary for proper examination. Bart Schwartz International Textiles, Ltd. V. Federal Trade Commission, 289 F.2d 665, 129 USPQ 258 (C.C.P.A. 1960), aff’d 121 USPQ 99 (TTAB 1959). The information considered to be necessary may include literature of exhibits as well as general information concerning circumstances surrounding the mark and, if applicable, its use. Requests for information which is not public knowledge, but is peculiarly within the knowledge of the applicant or available to the applicant, are particularly appropriate. TMEP Section 814. The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant’s failure to provide information requested under this rule. In re Babies Beat Inc., 12 USPQ2d 1729 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information).
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.
Nancy Clarke
/nancy clarke/
Trademark Examining Attorney
Law Office 102
Tel. (571) 272-9253
Fax (571) 273-9102
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.