UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/605146      

 

NOTICE OF SUSPENSION

 

This letter responds to the applicant’s communication filed on July 25, 2005.  The applicant (1) amended the identification to 12 International Classes but has only paid for 11 International Classes, (2) argued against the Section 2(d) refusal and (3) stated that it wished to retain both the Section 1(b) and 44(d) basis.  The amended identification remains indefinite.  Moreover, the applicant has not paid for all of the International Classes.  The requirement for an acceptable identification and the multi-class application requirements are maintained.  Upon consideration of the applicant’s arguments, the examiner withdraws the Section 2(d) refusal based on Registration No. 2786319 and 224365. 

 

SUSPENSION PENDING FOREIGN REGISTRATION CERTIFICATE

Action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant's country of origin.  If the registration is in a foreign language, an English translation must be submitted. The true copy, photocopy, certification, or certified copy of the registration should be forwarded to the Examining Attorney as soon as possible.  If the foreign application is abandoned, the Examining Attorney should be advised.

 

DUAL BASIS APPLICATIONS – SECTION 1(B) AND 44(D)

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. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  The applicant has stated that it wishes to retain both bases. 

 

REQUIREMENT FOR A DEFINITE IDENTIFICATION OF GOODS AND RECITATION OF SERVICES MAINTAINED FOR CLASSES 9, 24, 25 AND 41

In International Class 9 the applicant has pre-recorded vinyl records, compact discs followed by a semicolon.  The use of a semicolon indicates that the phrase is independent and therefore the applicant must specify the subject matter of the records and discs.  Alternatively, the applicant may delete the semicolon.  The applicant must add a semicolon after the phrase “pop music” because “pre-recorded video recordings are a separate item.  The applicant must also specify the subject matter of the pre-recorded video recordings.  The applicant must specify the subject matter of the motion pictures for broadcast on television. 

 

The applicant must delete the semicolons in International Class 24 to make clear that all the goods identified after textile articles are made of textiles.  If the applicant does not delete the semicolons, then the applicant must specify the material composition of the goods.  For instance, while textile table cloths and napkins are in International Class 24, paper table cloths and napkins are in International Class 16.

 

The applicant must correct the spelling of “pyjamas” in International Class 25 to “pajamas.”  Moreover, the applicant has listed the same identical sets of goods twice.  The applicant must delete the redundant items.

 

In International Class 41, the examiner has deleted “entertainment services, namely,” because it is followed by “television entertainment services namely.”  Moreover, the phrase performance of videotapes and video cassettes is not a recognizable service and must be deleted.  The applicant has production of videotapes multiple times and the redundant items have been deleted.  The applicant has identified one of the services as presentation and performance of pre-recorded musical shows.  Musical shows must be live to be an entertainment service in International Class 41.  The applicant must also specify the other shows.   The applicant must delete “and/or” and substitute the term “and.”  The term “or” suggests that the recitation could be either item but not necessarily both items and if it isn’t both items shouldn’t be listed in the recitation. 

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the Agency website at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The applicant may adopt the following identification, if accurate: 

 

Perfumes, toilet waters; eau de cologne; essential oils for personal use; cosmetics; eye shadow, lipstick, mascara, foundation makeup; toilet preparations, namely toilet water; eau de toilette; soap; antiperspirants; deodorants for personal care; hair care preparations; non-medicated skin care preparations; hair lotions, facial lotions, body lotions, hair waving lotions, after sun creams, after shave creams, anti-wrinkle creams, beauty creams, boot cream, cold cream, cosmetic creams and conditioners; shampoos; conditioners; beauty care preparations; beauty masks; body care preparations; depilatory cream, exfoliant cream, beauty mask, facial mask, body masks, baby oil, bath oil, body oil, make up powder and loose face powder and body scrubs and facial scrubs; hand and body lotions; dentifrices; shaving preparations, dyes for hairs; non-medicated bath preparations in the nature of bath oils, bath beads bath crystals, bath foam, bath gels, bath oil and bath powder; bath beads, bath crystals, bath foam, bath gels, bath oil and bath powder; scented body sprays; after shave lotions; pre-electric shaving preparations, in International Class 3;

 

Goods made wholly or principally of non-precious metal, namely metal name badges, keys, key blanks, key rings, key fobs, key chains, identification tags of metal, locks, figurines of metal, trophies, statues and statuettes, boxes, money boxes and toolboxes, in International Class 6;

 

Pre-recorded sound recordings; pre-recorded vinyl records, compact discs IN THE FIELD OF MUSIC; audio tapes, audio-videotapes, audio video cassettes, audio video discs and digital versatile discs all in the field of pop music; pre-recorded MUSICAL video recordings; motion picture films and television featuring animation, music, comedy, variety, adventure and/or drama shows; motion picture FILMS for broadcast on television IN THE FIELD OF ANIMATION, MUSIC, COMEDY, VARIETY, ADVENTURE AND DRAMA; blank audio tapes, blank videotapes, blank audio cassettes, blank video cassettes; spectacles; spectacle cases, sunglasses, in International Class 9;

 

Goods made wholly or principally of precious metals and their alloys or coated therewith, namely trophies, ornaments, figurines, name badges, coffee-pots, teapots, goblets, cups, serving trays, vases, decorative and jewelry boxes, watch cases, jewelry cases, cigarette cases, all purpose portable household containers, household utensils of precious metals and their alloys or coated therewith, namely, whisks, spatulas, ladles; towel holders and napkin holders; clocks, alarm clocks; watches; jewelry; precious stones; diamonds, rubies, sapphires; bracelets, jewelry chains, watch chains, non-monetary coins, medals, medallions, key rings, tie clips, tie pins, cufflinks, hat pins of precious metal, jewelry pins for use on hats, ornamental lapel pins, jewelry pins, tie pins, in International Class 14;

 

Printed matter, namely newspapers, magazines, books, comic books and newsletters featuring pop music, television entertainment news, entertainment news about celebrities and/or children's drama features; coloring books; children's activity books; unmounted photographs, mounted photographs; pictures, art prints, photographic prints, posters; greeting cards; postcards; notepads; address pads; scrap books; folders; calendars; photograph albums; diaries; postage stamps; stamp albums, stickers, oar stickers; decalcomanias; stationery; pens, pencils, erasers, pencil sharpeners, pencil cases, drawing rulers, boxes for pens, book marks; printed instructional and teaching materials, all featuring music, comedy, variety, adventure, entertainment and/or drama features; paper gift bags; envelopes; blackboards; paper height charts; paper covers for protecting stamps; cheque book holders; paper trays; paper party favors, in International Class 16;

 

Articles of leather or imitation leather, namely shopping bags, briefcases, wrist mounted carryall bags, rucksacks, all purpose sports bags, athletic bags, baby back packs, back packs, beach bags, book bags, diaper bags, duffel bags, gym bags, tote bags, boot bags for travel, satchels; wallets; coin purses; fanny packs, knapsacks, waist packs, business card cases; umbrellas, parasols, bags for storing records, in International Class 18;

 

Beverage glassware, cups, mugs, china dinner plates, domestic utensils, namely pot and pan scrapers, rolling pins, spatulas, turners, whisks; all purpose portable household containers; household containers for food and soap containers, non-being of precious metal or coated therewith; drinking glasses, namely beer and wine glasses and whiskey shot glasses, glass tumblers for drinking; crockery, namely plates, cups, bowls, mugs; plastic serving trays, hair combs, flasks, plastic coasters, lunch boxes, non-metal piggy banks, plastic water bottles sold empty, tooth brushes, household and kitchen containers not made of precious metals or coated therewith; figurines made of china, crystal, earthenware, glass, porcelain or terracotta, in International Class 21;

 

Textile articles, namely bed linen, duvet covers, pillow cases, bed sheets, bed blankets, table linen, table cloths, napkins, handkerchiefs, curtains, cloth pennants, cloth banners, cloth flags, towels, beach towels, textile wall hangings, face towels, tea towels, flannel, textile place mats; silk fabrics, in International Class 24;

 

Articles of clothing and outer clothing, namely shirts, sweatshirts, jackets, coats, raincoats, snowsuits, pants, trousers, shorts, tank tops, rainwear, cloth bibs, skirts, blouses, dresses, suspenders, sweaters, athletic uniforms, warm-up suits, jogging suits, shoes, boots, sneakers, sandals, booties, slipper socks, swim wear, scarves, dressing gowns, boxer shorts, socks, t-shirts; hats, caps, sunvisors, sleepwear, PAJAMAS, slippers, underwear, lingerie, wrist bands, head bands, ties, robes; masquerade and Halloween costumes and masks sold in connection therewith; foot wear and head wear for babies and toddlers; articles of clothing for babies and toddlers, namely shirts, t-shirts, shorts, jackets, socks and dresses, in International Class 25;

 

Bobby pins, hair pins, hat pins for securing hats, ornamental novelty pins, safety pins, waving pins of the hair, in International Class 26;

 

Toys and sporting goods, games and playthings, namely action figures and accessories therefore; bathtub toys; ride-on toys; equipment sold as a unit for playing card games; toy vehicles; dolls; flying discs; electronic hand held game unit for playing electronic games; equipment sold as a unit for playing a board games, a card game, a manipulative game, a parlour game and an action type target game; stand alone video output game machines; board games, card games; teddy bears, plush toys; jigsaw puzzles, cube puzzles, manipulative puzzles; balloons; paper face masks; skateboards; ice skates; roller skates; skis; water squirting toys; surfboards; swim boards for recreational use; swim fins; toy bake ware and toy cookware; toy model hobby craft kits; Christmas tree ornaments, ordinary playing cards, in International Class 28; 

 

Television entertainment services, namely, production of musical, live-action, comedy, children's drama, and animated television programs; music entertainment services, namely, production and performance of musical shows, musical concerts and radio and television programs featuring pop music or children's drama; production of pop music sound recordingS and pop music video recordings; entertainment services, namely stage theater production and PRODUCTION OF cabarets; production of videotapes, multimedia videotapes and sound recordingS in the nature of video cassettes, records, cd-roms, dvds; presentation, production and performance of AIR shows, LIGHT SHOWS, FASHION SHOWS, MAGIC SHOWS, LASER SHOWS, TELEVISION NEWS SHOWS; PRODUCTION of pre-recorded musical shows; presentation, production and performance of live musical shows, concerts and radio and television programmes featuring pop music or children's drama; recording, film, video and television studio services namely audio, film, video and television recording studios; publication of books, magazines and other texts, namely, newspapers, magazines, books, comic books and newsletters featuring pop music, television entertainment news, entertainment news about celebrities and children's drama features, in International Class 41.

 

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(a); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or services set forth in the present identification.

 

MULTI-CLASS APPLICATION REQUIREMENTS MAINTAINED

The applicant has listed goods and services in 12 International Classes but has paid for only 11 International Classes.  Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following:

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

 

 

 

 

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(571) 272-9423 Phone

(571) 273-9423 Fax