Offc Action Outgoing

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  76/622083

 

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

 

This letter also responds to Applicant’s communication received December 17, 2004.  Applicant submitted a copy of the relevant foreign registration.  This amendment is acceptable and has been entered into the record.

 

Filing Basis

 

Applicant must advise the trademark-examining attorney whether applicant intends to rely solely on the foreign registration as the basis for registration.  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.

 

Unless applicant indicates otherwise, this Office will presume that the applicant wishes to rely on both Section 1(b) and Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not register until an acceptable allegation of use has been filed.

 

Foreign Registration Standard Character Drawing 

 

Applicant should note that the drawing of the mark must be a “substantially exact representation” of the mark as it appears in the foreign application or registration.  See United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481 (TTAB 1988); 37 C.F.R. §2.51; TMEP §§807.03(f), 807.14 and 1011.01.  Specifically, if the U.S. application contains a standard character claim, the foreign application or registration must also contain an equivalent claim.    Therefore, Applicant must either (1) submit a statement that “under the law of the country of origin, the foreign application or registration includes a standard character claim,” or (2) delete the standard character claim from the U.S. application.  37 C.F.R. §2.52.  If the standard character claim is deleted from the U.S. application, then the drawing of the mark will be considered a “special form drawing.”  37 C.F.R. §2.52.

 

Request for Information

 

Trademark Rule 2.61(b) states “The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  The trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant’s failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ 2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).  More recently in In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999), the Trademark Trial and Appeal Board affirmed the examining attorney’s refusal to register a mark because the applicant’ failed to comply with the examining attorney’s information request.  The Board emphasized the fact that because the application at issue was intent to use application, the failure to respond fully impeded the examining attorney’s ability to evaluate the descriptiveness issue. 

 

The nature of the goods is not clear from the present record.  In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type.  If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Classification and Identification of Goods 

 

The wording in the identification of goods is too broad because it could include items classified in other classes.  The applicant must amend the identification to list each item by its common commercial name.  TMEP §§1401.04(b), 1402.01 and 1402.03.  Applicant may wish to consult the on-line searchable Manual of Acceptable Goods and Services  on the Patent and Trademark Office homepage.   The web site address is as follows:

 

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

 

The applicant may adopt the following identification of goods, if accurate: 

 

                International Class 006:          [specify the common commercial name e.g. metal scaffolding] for use in protecting workers from falling while working at heights.

 

                International Class 019:          [specify the common commercial name e.g. non-metal scaffolding] for use in protecting workers from falling while working at heights.

 

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.

 

Addition of a Class

 

The applicant has paid for one International Class.  If an amendment to the identification of goods requires the addition of an International Class to the application, the applicant should note the following.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) and 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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

/Toni Y. Hickey/

Trademark Examining Attorney

Law Office 115

(571) 272-9475 phone

(571) 273-9115 fax

 

 

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 has been 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.