UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/615015
APPLICANT: HILTON, PARIS
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: THAT'S HOT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 65255-1008
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/615015
The assigned examining attorney has reviewed the referenced application and determined the following:
The examining attorney has conducted a preliminary search of the Office records and a complete search of Class 3. TMEP section 1105.01. If the applicant chooses to prosecute the application with the inclusion of any additional class(es) shown in the suggested identification of goods set forth below, accompanied by the requisite fee(s), the examining attorney will then conduct a complete search of the applicable class(es).
Pursuant to the aforementioned search, although the examining attorney 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. 78/491888. 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). 37 C.F.R. §2.83. Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension. The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.
The applicant has also filed Application Serial No. 76/604206. The Patent and Trademark Office will not issue duplicate registrations. TMEP §703. Therefore, the applications cannot contain duplicate goods.
The identification of goods is unacceptable as indefinite. TMEP §1402.01. The applicant may adopt the following identification, if accurate:
Class 3 – Hair care preparations; non-medicated skin care preparations; nail care preparations.
Class 5 – Medicated skin care preparations.
Class 6 – Metal name badges; jewelry boxes of metal.
Class 9 – Electronic devices, namely, [specify each item by its common commercial name]; hand-held unit for playing electronic games; electronic gambling machines, namely, [specify, e.g., slot machines with or without video output]; video game software; computer game programs; video game machines for use with televisions; computer game equipment containing memory devices, namely, discs.
Class 16 – Temporary tattoos; trading cards; checkbook covers; pens; pencils; pencil sharpeners; erasers; coaters made of paper; postcards; autograph books; binders; school and office supplies, namely, [specify each item by its common commercial name]; paper badges.
Class 14 – Badges of precious metal; jewelry boxes of precious metal.
Class 18 – Handbags; backpacks; umbrellas.
Class 20 – Plastic name badges; jewelry boxes not of metal; picture frames; mirrors.
Class 21 – Coasters not of paper and not being table linen; lunch boxes; hair grooming accessories, namely, combs, hair brushes [list additional items, if any].
Class 25 – Clothing accessories, namely, [specify each item by its common commercial name].
Class 26 – Shoe laces; ornamental cloth patches; artificial flowers; hair ornaments; hair accessory kits containing hair ornaments, [list additional items]; ornamental novelty pins; ornamental novelty buttons.
Class 28 – Toys, namely, [specify each item by its common commercial name]; dolls; doll playsets; toy stuffed animals; toy slide viewers; educational toys, namely, [specify each item by its common commercial name].
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://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):
(1) Applicant must list the goods 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 not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
The applicant’s mark was filed in “typed form.” As of November 2, 2003, the rules pertaining to drawings in trademark applications changed. “Typed form” is no longer a recognizable drawing format; what was typed form is now considered “standard character.” Marks formerly filed with typed form drawings now must be filed with a “standard character claim.”
When the applicant files a mark with a standard character drawing, the applicant must submit a standard character claim. 37 C.F.R. §2.52(a).
Accordingly, the applicant must submit the following standard character claim:
“The mark is presented in standard character format without claim to any particular font, style, size or color.”
Whether applicant chooses to respond via regular mail, facsimile or electronic mail, applicant should submit its response using only one of these means of communication. Duplicate responses will delay the prosecution of the application.
Applicants may now file requests to change the correspondence address electronically on up to 20 applications at one time. The Office encourages applicants to use this time-saving form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm.
The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (3rd ed., Rev. 2, May 2003), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.
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.
/Matthew J. Pappas/
Trademark Attorney
Law Office 105
571/272-9206
571/273-9105 fax
matthew.pappas@uspto.gov (informal)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.