Offc Action Outgoing

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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/644693

 

 

The following is a non-final office action responding to applicant’s correspondence dated 08/31/2006. 

 

1.  Amendment to the Identification of Goods

Applicants proposed amendment to the identification of goods is rejected as beyond the scope of the acceptable amendment filed 08/21/2006.   The identification of goods in effect at the time of approval for publication is restored.

 

The proposed amendment to the identification cannot be accepted because the wording "CONDITIONERS, SCULPTING LOTIONS, SCULPTING FOAMS, STYLING GELS AND SPRAYS, AND WAVING AND SETTING LOTIONS" refers to goods that are not within the scope of the acceptable identification that was set forth in the application in the response of 08/21/2006. 

 

While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

Once an applicant amends the identification of goods or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted. In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991). The applicant may not amend the identification to reinsert goods or services that were omitted or deleted from the identification of goods or services, except in the following limited circumstances:

 

     (1) Where, before publication or within six months of the mailing of an examiner's amendment (see TMEP §§707 et seq.), whichever is earlier, the applicant objects to an amendment of the identification of goods or services in the examiner's amendment on the ground that the examiner's amendment does not reflect the agreement between the applicant and the examining attorney;

 

     (2) Where the applicant inadvertently omits goods or services from an amendment to allege use and has not specifically indicated an intention to delete those goods or services (see TMEP §1104.09(c)) ; or

 

     (3) Where the applicant inadvertently omits goods or services from a statement of use and has not specifically indicated an intention to delete those goods or services (see TMEP §1109.13).

 

In contrast to situations (2) and (3), set out above, if, in a request for an extension of time to file a statement of use, the applicant inadvertently omits particular goods or services when specifying the goods and services on or in connection with which it has a continued bona fide intention to use the mark in commerce, those items may not later be reinserted. 37 C.F.R. §2.89(f); TMEP §1108.02(d).

 

TMEP § 1402.07(e). 

 

Applicant’s correspondence of  08/31/2006 does not allege any of the circumstances listed in items 1 through 3, above.  Thus, the proposed amendment cannot be accepted. 

 

2.  Advisory Regarding Correspondence

Please note that the correspondence of 08/21/2006 and  08/31/2006 are signed by two different attorneys.  During the prosecution of a trademark application, every action that is not signed by the applicant must be signed by a practitioner qualified under 37 C.F.R. §10.14 to practice before the USPTO in trademark cases. 37 C.F.R. §10.18(a). Any action that is so signed will be accepted regardless of whether the practitioner who has signed is the same person who signed previously submitted papers, and regardless of whether the practitioner has filed a power of attorney. 37 C.F.R. §2.17(c). However, if the signer is different, the USPTO will continue to send correspondence to the correspondence address already established unless and until there is a written request to change that address, signed by the applicant.

TMEP §  603.04.

 

 

      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.

 

 

/Joanna M. Dukovcic/

Trademark Examining Attorney

Law Office 101

Phone:  (571) 272-9707

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.