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  76/637122

 

Search Results: Likelihood of Confusion – Prior Pending Application

Information is enclosed concerning pending Application Serial No. 76609716.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier‑filed application registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.  Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.

 

 

Registration Refused Under §§1, 2 and 45: Failure to Function as Trademark

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq. Please note that the proposed mark does not function as a trademark because the specimen submitted with the application is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual trademark use because it comprises what appears to be a shipping label. However, the specimen is primarily illegible and cannot be clearly viewed.  Additionally, while shipping labels are often acceptable as specimens to show use, shipping or mailing labels may be accepted only if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. Electronic Communications, Inc. v. Electronic Components for Industry Co. , 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971), cert. denied 404 U.S. 833 (1971); In re A.S. Beck Shoe Corp. , 161 USPQ 168 (TTAB 1969). TMEP 904.04(a).  They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of this is the use of the term solely as a return address. Bookbinder's Sea Food House, Inc. v. Bookbinder's Restaurant, Inc. , 118 USPQ 318 (Comm'r Pats. 1958); I. & B. Cohen Bomzon & Co., Inc. v. Biltmore Industries, Inc. , 22 USPQ 257 (Comm'r Pats. 1934). See TMEP §1202.02 regarding trade name refusals. It appears that the specimen shows use of the mark merely as a trade name. Thus, the specimen does not show use of the mark in relation to the goods identified in the application. As the specimen submitted does not show use of the mark in commerce in relation to the identified goods, the applicant must submit a specimen showing the mark as it is used as a trademark in commerce.  37 C.F.R. § 2.56.  Examples of acceptable specimens are tags, labels, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with a signed affidavit or signed declaration under 37 C.F.R. §2.20, that “the substitute specimen was in use in commerce prior to the filing of the application.”  37 C.F.R. §2.59(a); TMEP § 904.09.

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s):

Clarification of Identification and Classification of Goods Required

The identification of goods is unacceptable as indefinite. The wording “coatings” in the identification of goods needs clarification because it is vague and does not clearly identify the nature of the goods provided. While the applicant provides the use of the coatings, the applicant did not provide the nature of the coatings. The applicant must identify with clarity and specificity the exact nature of the goods provided. Additionally, depending on the nature of the goods, coatings, such as paints and finishes are generally classified in International Class 2. Applicant may adopt the following identification of goods, in the designated class, if accurate. TMEP §1402.01.

 

International Class 2

Coatings in the nature of __________________[specify the nature of the goods, e.g., automobile finishings, enamel paints, corrosion inhibiting paint type coatings for use in the oil and/or gas drilling industry, etc.], in International Class 2.

For help in drafting a proper recitation of goods and services, please consult the Patent and Trademark Office Acceptable Identification of Goods and Services Manual. A searchable version of the Identification of Goods and Services Manual is available online at our website. The address is: 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.

 

Since it is possible that, when properly identified, the applicant’s goods and/or services may be properly classified in more than one international class(es), information concerning adding classes to an application is set forth below:

Combined or Multiple-Class Application

If applicant prosecutes this application as a combined, or multiple‑class 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;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

Questions Concerning This Office Action

If 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.

 

 

 

 

 

Tonia M. Fisher

/Tonia M. Fisher/

Trademark Examining Attorney

La w Office 113

(571) 272-9720

 

 

 

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.