UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/627997
APPLICANT: Greg Young / Jamel Johnson
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MANDATORY RECORDS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/627997
The assigned examining attorney has reviewed the referenced application, and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
This application may not proceed to publication, however, until the applicant responds to the following informalities.
Applicant must disclaim the descriptive wording “RECORDS” apart from the mark as shown because it merely describes a feature of the applicant’s services, namely, that the applicant’s are a record company, producing records and other recordings. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “RECORDS” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Proper Partnership Designation
Applicant must amend the “Applicant’s Name” and “Applicant’s Entity Type” sections of the application to identify itself as follows, if accurate: “[state partnership name], a partnership organized under the laws of _____________, composed of ________________.” Applicant must list all general partners and their national citizenship (for individuals) or the U.S. state or foreign country of their organization or incorporation, as appropriate. 37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.
The identification of services needs clarification because it is too broad and could include services classified in other international classes. While all goods are classified in International Classes 1 through 34, services are classified in International Classes 35 through 45. The applicant’s identification contains both goods and services. The identification must be specific and definite, and identify each and every good and service clearly and concisely.
Applicant may substitute the following wording, and adopt any of the following, if accurate:
T-shirts in International Class 25; and/or
Record production services and music production services; recording studios; in International Class 41.
TMEP §§1402.01 and 1402.03.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services 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.
Insufficient Fee
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class.
Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
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):
(1) Applicant must list the goods and/or services 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 and/or services 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.
Applicant must submit a concise description of the mark. 37 C.F.R. §2.37; TMEP §§808 et seq. The following is suggested:
The mark consists of a stylized design of the earth, showing Canada, North and South America with Mississippi raised and enlarged on top of the planet, with a cross directly above the earth, and two hands, attached to an LP record, holding the earth from the bottom, and the word MANDATORY superimposed across the top portion of the earth, and the word RECORDS immediately below the record.
Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.
If using regular mail, to avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on _____________________.
(Date)
__________________________________________________________________
(Signature)
__________________________________________________________________
(Typed or printed name of the person signing the certificate)
The certificate-of-mailing procedure does not apply to the filing of trademark applications.
/Andrea Koyner Nadelman/
Andrea Koyner Nadelman
Trademark Attorney
Law Office 110
(571) 272-9370
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.