Offc Action Outgoing

On February 11, 2006, action on this application was suspended pending the disposition of Application Serial Nos. 75607962, 75632976, 76439624, 78314016, 78428988, and 78444680. With the exception of App. No. 76439624, the referenced pending applications have abandoned and are no longer a bar to the registration of applicant’s mark. The potential refusal based on App. Serial No. 76439624 is withdrawn, based upon the amended identification of goods and services in that application (now registration).

The Section 2(d) refusal to register the applicant’s mark in International Class 30 based on a likelihood of confusion with the mark in U.S. Registration No. 2118736 is withdrawn, as the registration has been cancelled.

However, the application can not be approved for publication until the following identification issues are resolved.

Requirement for Acceptable Identification—Classes 21 and 25

The identification of goods in Class 21 is not acceptable because it contains indefinite wording. Specifically, the applicant must indicate whether the beverage mixers are electric or non-electric. Electric mixers are properly classified in Class 7.

In Class 25, the applicant has added the word “namely” to the identification but has not deleted the unacceptable term “including”. As previously discussed, the term “including” is unacceptable because it is open-ended. See TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive.

The applicant must amend the application to adopt an acceptable identification of goods for those goods currently listed in International Class 21 and 25. The applicant may amend to adopt one or more of the following, if accurate:

INTERNATIONAL CLASS 7: Electric beverage mixers.

INTERNATIONAL CLASS 21: Household and kitchen utensils, namely, non-electric barware for mixing and serving beverages; glass beverageware; serving ware; beverage trays; spice shakers; non-electric beverage stirrers, mixers and shakers; beverage coolers; ice buckets; drink pourers; napkin holders; bowls; combs and hair brushes; plastic and glass coasters; ice scoops; barware and glassware drying racks; tip jars; candle holders not of precious metal; cocktail strainers; garnish picks; bottles sold empty; household containers; serving trays not of precious metal; and corkscrews.

INTERNATIONAL CLASS 25: Clothing, namely, t-shirts, shirts, scarves, ties, slacks, shorts, jeans, coats, footwear, socks, sport jackets, jackets, sweaters, belts, dresses, skirts, aprons, hosiery, beachwear, swimwear, ski suits, ski wear and underwear; headgear, namely, hats and caps; bandanas; and scarves.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

Multiple-Class Application Requirements

If applicant prosecutes this application with additional classes, 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/or a foreign registration under Section 44(e):

(1) Applicant must list the goods and/or services by international class; 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).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430 (phone)

(571) 273-9430 (fax)

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.