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  76/595229

 

            The assigned examining attorney has reviewed the referenced application and determined the following.

 

I.            OFFICE RECORDS

 

            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.

 

II.            IDENTIFICATION OF GOODS

 

            The identification of goods is unacceptable as indefinite.  TMEP section 1402.  The applicant may, for example, adopt the following identification, if accurate:

 

In International Class 8;  knives, namely, ____(indicate the type of knives, e.g., hunting, folding, chef, kitchen, butcher, paring, fishing, or sport knives, etc.).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71; TMEP section 1402.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods identified in the present identification.

 

              For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual can be found online at: http://www.uspto.gov/web/offices/tac/doc/gsmanual/.  It offers a searchable list of acceptable identifications and classifications, and although it is not an exhaustive list, it is nonetheless a very useful guide in formulating acceptable identifications.

 

III.      STANDARD CHARACTER CLAIM

 

            The 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).

 

IV.      DUAL FILING BASES

 

            The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

            If the applicant wishes to proceed relying on the applicant's intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  If the applicant does so, the applicant may not subsequently rely on the foreign registration.  TMEP section 1006.01.

 

            If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.

 

 

 

 

 

 

 

 

 

 

 

V.            CONCLUSION

 

             If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.

 

 

/Nicholas K.D. Altree/

Trademark Attorney

Law Office 108

(571) 272-9336

Fax: (571) 273-9336

 

 

 

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

 

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.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.