UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/591967
APPLICANT: LI PENG ENTERPRISE CO.,LTD.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SECOTEC
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CORRESPONDENT’S REFERENCE/DOCKET NO: SECO6003/TJM
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 76/591967
This letter responds to the applicant’s communication filed on June 9, 2005.
The applicant (1) argued against the failure to function as a trademark refusal; (2) advised the Office that the prior pending application has been abandoned; (3) amended the identification of goods; and (4) argued against the requirement that it submit a substitute drawing. Nos. (2) through (4) are acceptable.[1] Application Serial No. 76/571513 is hereby withdrawn as a potential bar to registration of the applicant’s mark.
In lieu of amending the identification of goods as suggested by the examining attorney in the prior Office action, the applicant argues that the mark “clearly functions as a trademark as evidenced by the hang tag specimen.” Hang tags normally are acceptable specimens for clothing. However, the hang tag specimen in this case shows the use of the mark in conjunction with the fabric used to make the clothing rather than the specific clothing items identified in the application. From the back of the applicant’s hang tag specimen: “SecoTec® fabric.” Another of the applicant’s specimens consists of a photograph of three fabric samples containing various SecoTec trademarks.
This refusal will be withdrawn if applicant adopts the following identification of goods, if accurate: “Fabric sold as a component part of clothing, namely, suits, suit coats, sweat suits, sport shirts, sport coats, jackets, sweat pants, pants, skirts, athletic shoes, hats and caps.” TMEP §1402.05(a).
In the alternative, the applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq. In this case, applicant may wish to amend the application to assert a Section 1(b) filing basis.
Where an application is based on a bona fide intention to use the mark in commerce (Section 1(b)), applicant must submit the following statement:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
For the foregoing reasons, the failure to function as a trademark refusal under Sections 1, 2, and 45 is maintained and made FINAL.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
(571) 272-9164
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
[1] The applicant writes that it “makes the present amendment of the identification of goods without surrendering any of the scope of the previous identification of goods. Thus, if any further amendments are required in order to obtain approval, the Applicant is entitled to the full scope of the previous identification of goods.” As explained above, the applicant’s amended identification of goods in International Class 25 is acceptable. “Once an applicant amends the identification of goods or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted. In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991).” TMEP 1402.07(e). Thus, applicant is not “entitled to the full scope of the previous identification of goods.”