Offc Action Outgoing

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. 

 

 

Serial Number  76/593562

 

 

PRIOR PENDING APPLICATION

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/372338.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

In this case, the proposed mark is identical with the pending mark.  Additionally, the goods/services in the former pending application are identical/highly similar and would be encountered in the same channels of trade as the applicant’s goods and services.  Based on the similarities in the marks and the goods/services, a likelihood of confusion would exist between these marks.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

The applicant must also respond to the following informalities.

 

 

IDENTIFICATION/CLASSIFICATION OF GOODS AND SERVICES

 

The wording “other written materials” in International Class 16 in the identification of goods is unacceptable as indefinite.  Additionally, the recitation of services must be clarified.  The applicant may adopt the following identification, if accurate: 

 

International Class 16:                        Pamphlets, newsletters, flyers, and other written materials in the nature of [specify, i.e. books] relating to dermatology; and/or

 

International Class 44:                        Providing [specify type of information, i.e. health] information in the field of dermatology.  TMEP §1402.01.

 

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

 

For the applicant’s convenience, the Office’s Acceptable Identification of Goods and Services Manual is available at www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html and sets out appropriate language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.  The applicant may find it helpful to consult and to search the manual when amending the recitation and classification of services.  It is only a guide and subject to modification.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Bridgett Garrett Smith/

Law Office 115

Trademark Examining Attorney

United States Patent and Trademark Office

571 272-9482 phone

571 273-9482 fax

 

 

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.

 

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.