UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL OFFICE ACTION-FOA

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/592931

 

Introduction

This application has been reinstated again by the Commissioner for Trademarks.  The Office records have been searched again 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.

 In the applicant’s communication the applicant: (1) amended the recitation of services in International Class 35; (2) amended the filing basis for International Class 35; (3) deleted International Class 42 from the application; (4) asserted a claimer of ownership to prior registrations; (5) submitted a consent statement as to the person named in the mark.

Items 2-4 are acceptable and have been entered into the record.

 

Item 5 has been entered into the record, based on implicit consent pursuant to applicant’s claim of ownership of Reg. No. 2286255. TMEP Section 1206.03(b).

The use based refusal because the proposed mark, as used on the specimen of record, functions solely as a domain name or Internet address, and does not function as a service mark is hereby withdrawn because the applicant has amended the application to an intent-to-use application under Trademark Act Section 1(b).

Item 1 is acceptable in part and unacceptable in part, as noted below.

Recitation of Services-Final

As previously required, the wording “and related accessories” in International class 35 is unacceptable as indefinite. Applicant must provided clarification as to the nature of the accessories. This wording appeared twice in the original recitation of services. The applicant amended the first reference to “and clothing accessories” which is acceptable, however the second reference, which appears after “cartoon prints” that is “cartoon prints and related accessories” remains indefinite. Applicant must provided clarification as to the nature of the accessories. TMEP §1402.01.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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

This requirement is continued and made final.

Proper Response to Final Action-Partial Requirement

If applicant does not respond within six months of the mailing date of this final action, then the following wording in the recitation of services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  “and accessories”.  The application will proceed forward for the remaining services.  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).

 

 

 

 

 

/Monique C. Miller/

Monique C. Miller

Trademark Attorney

Law Office 109

(571) 272-9347 (phone)

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.