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  76/626617

 

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

 

Search for Conflicting Marks

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Consent to Register Name of Individual

 

Applicant must confirm that the name MICHAEL GRAVES in the mark identifies a particular living individual who is affiliated with the applicant and who consents to the registration of the mark.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.

 

Disclaimer

 

The applicant must disclaim the descriptive wording "COLLECTION" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive of a characteristic of the applicant’s goods because it means “several things grouped together or considered as a whole”[1] and the applicant’s goods all originate from the same designer.

 

• S: (n) collection, aggregation, accumulation, assemblage (several things grouped together or considered as a whole)

 

The attached copies of third-party registrations show that the Office regularly requires a disclaimer of COLLECTION in marks used on goods similar to those of the applicant.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use COLLECTION apart from the mark as shown.

 

Identification and Classification of Goods

 

Applicant has classified “glass shelves for bathroom use” in International Class 21; however, the correct classification is International Class 20.  Applicant must either delete these goods or add International Class 20 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Please note that, while an application may be amended to clarify or limit the identification, the applicant may not add any goods or services that are not within the scope of the goods or services recited in the present identification.  37 C.F.R. Section 2.71(b); TMEP section 1402.06.

 

If applicant adds any more classes to the application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

Response Options

 

Please see below for information on how to respond to this Office action.

 

 

/Andrew J. Benzmiller/

 

 

 

/Andrew Benzmiller/

Trademark Examining Attorney

Law Office 116

tel. (571) 272-9127

 

 

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.