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  76/634762

 

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

 

SEARCH OF MARK

 

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. Section 1052(d); however, the applicant is advised that the examining attorney may conduct an additional search of the Office records for similar registered or pending marks upon submission of a translation of the mark, if any.

 

STANDARD CHARACTER CLAIM REQUIRED

 

The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed on or after November 2, 2003, applicants must follow the new standard character drawing rules in force. If the application does not include a standard character claim, but the mark is shown in a format that previously would have been considered "typed" (i.e., the mark is shown in all capital letters, or the mark is specified as "typed" in the body of the application, on a separate drawing page, or on a cover letter filed with the application), then the drawing of the mark shall be treated as a standard character drawing. Accordingly, because the applicant in this case has submitted a "typed" mark, the applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

CLARIFICATION OF SECTION 44 FILING BASIS REQUIRED

 

The application is confusing because the applicant has stated that it has a “bona fide intention to use the mark in commerce on or in connection with the above-identified goods and claims priority of the following foreign registration in accordance with 15 U.S.C. 1126(e), as amended” (emphasis added).  The applicant then lists information concerning Mexican Registration No. 490356.  However, a claim of priority is based on an earlier-filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d); not an existing foreign registration under 15 U.S.C. §1126(e), as declared by the applicant.  TMEP §806.01(c).

 

Consequently, the applicant must clarify, if accurate, that it “has had a bona fide intention to use the mark in commerce on or in connection with the identified goods as of the application filing date and is basing the application on a foreign registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e). TMEP §806.01(d). 

 

FOREIGN REGISTRATION EXPIRED

 

The foreign registration on which this application is based expired on April 28, 2005.  The applicant must submit evidence that the foreign registration will be in force at the time of issuance of the United States registration.  This evidence must consist of a true copy, photocopy, certification or certified copy of the certificate of registration showing that the foreign registration has been renewed, accompanied by an English translation of such documents.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a). 

 

IDENTIFICATION OF GOODS EXCEEDS SCOPE OF FOREIGN REGISTRATION

 

The wording in the identification of goods (i.e., “meats and meat extracts”) in the application is unacceptable because it exceeds the scope of the goods in the foreign registration (i.e., “all kind [sic] of beef and pork meat”).  37 C.F.R. §2.32(a)(6).  The applicant must therefore do one of the following:

 

(1)      amend the identification of goods in the application to correspond to the goods identified in the foreign application or registration; or

(2)      delete the Section 44 basis for the goods and rely solely on the 44(e) basis for those goods and. 

 

15 U.S.C. §1051(a)/15 U.S.C. §1051(b)>; 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972). 

 

APPLICATIONS FILED 1(b) AND 44(e)

 

The 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.

 

INQUIRY ON SIGNIFICANCE

 

The applicant must indicate whether “SASA” has any significance in the relevant trade, any geographical significance or any meaning in a foreign language.  37 C.F.R. Section 2.61(b).

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(571) 272-9352 phone

(571) 273-9108 fax*

*fax no. for official responses only

 

 

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.