UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/635739
APPLICANT: Fish, Susana
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SOUNZ
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CORRESPONDENT’S REFERENCE/DOCKET NO: 18185-0006
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 76/635739
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Search Results
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.
Identification of Goods – Partial Requirement
While most of the identification of goods is acceptable, the wording “audio and media portable storage” in the identification of goods needs clarification because it is overly broad and indefinite. Applicant must state the common commercial or generic name of the goods. Additionally, applicant has listed goods, which can be categorized in two classes, but has paid the fee for only one class. Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
Additionally, applicant must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Applicant may adopt any or all of the following wording, if accurate. TMEP §1402.01.
“Audio and media portable storage, namely, laptop carrying cases, holders for compact discs, and protective carrying cases for portable music players namely MP3 players,” in International Class 9, and/or;
“Trunks and traveling bags, backpacks, holdalls, hand bags, tote bags, rucksacks, briefcases, ” in International Class 18.
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.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
If applicant should fail to respond to this Office action within the six month time limit, then the goods set out above as indefinite will be deleted from the application and the application will then proceed forward for the remaining goods only. 37 C.F.R. §2.65(a)
Combined Applications
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) and a foreign registration under Trademark Act Section 44(e):
(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.
Significance of Mark
Applicant must specify whether “SOUNZ” has any significance in the relevant trade or industry, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Entity
Applicant must clarify its entity type because there is an inconsistency in the application. Specifically, the application indicates that an individual owns the mark, but two names are listed.
A mark is usually owned by a single business entity or one individual. If both named applicants own the mark jointly, they must state that they are joint applicants. TMEP §803.03(d). Applicant cannot amend the application to designate another entity as the applicant. If the application was filed in the name of the wrong party, then this application is considered void. In such a case, the true owner may refile a new application for the mark, with a new filing fee. TMEP §803.06.
Certificate Required
If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin. Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01, 1003.03 and 1004.
If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).
Option to Delete Basis
If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration. Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01 and 1004.01(b).
If applicant’s attorney 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.
/Pamela N. Hirschman/
Trademark Examining Attorney
Law Office 105
571-272-8272
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.