UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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. 

 

Serial Number  76/612699

 

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

 

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. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78424828. 37 C.F.R. §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).

 

Upon receipt of applicant’s response resolving the following requirements, action on this application will be suspended pending the disposition of Application Serial No. 78424828. 37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).

 

Standard Character Drawing Claim

 

Although the applicant partially addresses the issue in its October 17, 2004, amendment and it the original application, the applicant must submit the following complete 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).

 

Indefinite Identification of Goods

 

The identification of goods is unacceptable as indefinite.  Pursuant to TMEP §1402.01, the applicant may adopt the following identification, if accurate: 

 

Class 9: MPEG audio layer-3 players, namely MP3 players; portable digital audio players; portable multimedia players, namely PMP; multimedia players for vehicles; multimedia players for use by wireless communications; digital multimedia broadcasting receivers, namely DMB receivers; digital internet video express players; radio receivers; radios incorporating clocks; audio and video receivers; television receivers; satellite television receivers; communications apparatus for vehicles, namely, [specify by common commercial name]; portable communications apparatus, namely, [specify by common commercial name]; sound recorders except for movies; recording and playing devices for sound carriers; coin-operated musical automation, namely juke boxes; digital versatile disc players, namely DVD players; record players; megaphones; video disc players; video recorders; blank video cassettes [or specify subject matter]; juke boxes for music; sound recording apparatus; acoustic conduits; sound transmitting apparatus; sound transmitting apparatus, namely, [specify by common commercial name];; sound reproduction apparatus; acoustic couplers; electric phonographs; acoustic diaphragm; voltage surge protectors, namely, electricity limiters; cassette players; compact disc players, namely CDP; and loud speaking systems.

 

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

 

For assistance with amending this identification of goods, the applicant may consult the searchable Manual of Acceptable Identifications of Goods and Services online at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Dual Bases and Foreign Registration

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration.  TMEP §§1004.01 and 1004.01(b).

 

If applicant is asserts §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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.

 

 

/Dayna J. Browne/

Trademark Attorney

Law Office 114

Ph: (571) 272-8361

Fax: (571) 273-9114

 

 

 

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 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.