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  76/617625

 

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

 

Search Results

Information is enclosed concerning pending Application Serial No. 78368720.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier-filed application registers, registration may be refused under Section 2(d) with regard to Class 28 only.  37 C.F.R. §2.83.

 

Identification of Goods

The wording “license plate frames, … car emblems, …bookends, and costume jewelry” in the Class 6 identification of goods needs clarification.   “License plate frames” are in Class 12, not Class 6.  Thus, applicant must either delete these goods or add International Class  12 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Similarly, “emblems” in the nature of “paper and printed emblems”  are in Class 16. “Car emblems” is too vague and is misclassified.  “Bookends” are also in Class 16. Applicant must either delete these goods  or add International Class 16 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Applicant must correct the classification of the  “costume jewelry” and amend the application to classify these goods in International Class  14.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The current wording used to describe the Class 20 goods needs clarification because several items are identified too broadly and are misclassified. Specifically, “resin collectibles” is too broad.  Applicant may amend to “collectibles in the nature of cold cast resin figurines”, if accurate. The correct classification  for “desk accessories” such as  “desktop business card holders” “pen and pencil holders” “letter openers” and  “bookends”  is International Class  16.  Applicant must either delete these goods or add International Class  16 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  Finally, “bean bag furniture” should be deleted.  “Bean bags” are in Class 28. 

 

The wording “grilling utensils, stained glass, …. trays,” in the Class 21 identification of goods needs clarification because  it is vague.  Applicant may change this wording to “cooking utensils, namely, [specify; e.g., grill covers, grills, etc], stained glass [specify; e.g. figurines OR decoration]; ….serving trays not of precious metal” if accurate.  TMEP §1402.01.

  

Applicant must correct the classification of the goods “and cloth purses” in Class 24 in the application and amend the application to classify them in International Class  18.    All purses are classified Class 18 regardless of material composition.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Applicant classified “football helmets” and “megaphones”  in Class  28; however, the correct classification is Class  9.  Applicant must either delete these goods or add Class  9 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). The wording “die cast vehicles” in the identification of goods needs clarification.  Applicant may change this wording to “toy die cast vehicles other than cars” if accurate.  TMEP §1402.01.

 

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

 

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://tess2.gov.uspto.report/netahtml/tidm.html.

 

Combined Applications

If applicant adds classes under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid; and

 

(3)   For each additional class of goods, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/kbp/

Kimberly Boulware Perry

Attorney, US Patent & Trademark Office

tel.: 571-272-9208; fax: 571-273-9112

email: kimberly

 

 

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.