UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/635738 APPLICANT: Intermatch Sweden AB | |
| CORRESPONDENT ADDRESS: | RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 |
| MARK: RESERVA FIGURADOS | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 4450-4030 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. |
Serial Number 76/635738
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
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.
The applicant must amend the application to specify at least one filing basis in the application; and applicant must also satisfy all the requirements for the basis or bases asserted. TMEP §806. In the present case, applicant has failed to set forth or satisfy the requirements for a basis.
An application may be filed based on the following:
(1) use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));
(2) a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));
(3) a claim of priority, based on an earlier-filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));
(4) 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)).
Depending on the circumstances, the applicant may be entitled to assert more than one of the above bases for filing. In such a case, the applicant must: (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies. See 37 C.F.R. §2.34; TMEP §§806.02.
Although multi-basis applications are permitted, the applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
The applicant must submit a statement attesting to the facts set forth in the application, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.32(b) and 2.33. No signed verification was provided with the application.
If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that “the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.
If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or §1126, the verified statement must include an allegation that “applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
The applicant must submit an English translation of the mark. 37 C.F.R. §2.61(b); TMEP §809. The following translation statement is suggested: “The English translation of the mark is “[insert translation].”
Disclaimer
Where the translation of non-English wording in the mark demonstrates that the wording is descriptive, deceptively misdescriptive, geographically descriptive, or generic in connection with the identified goods or services, then that wording comprises an unregistrable component of the mark and is subject to a proper disclaimer requirement in the same way that the English version would be subject to a disclaimer. TMEP §1213.08(d).
Here, the applicant must disclaim the descriptive wording “reserva” apart from the mark as shown because it likely means “reserve,” and, as such, merely laudatorily describes the applicant’s cigars in that they are made or offered for a special purpose. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03. (Please see the attached dictionary definition of “reserve”).
Please also note that the format for the disclaimer statement must refer to the actual non-English wording that appears in the mark, not the English translation of that wording. TMEP §1213.08(d). A properly worded disclaimer would thus read as follows:
No claim is made to the exclusive right to use “reserva” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
If the applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Dayna J. Browne/
Trademark Attorney
Law Office 104
Ph: (571) 272-8361
Fax: (571) 273-9114
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.uspto.gov/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.