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  76/644846

 

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

 

Prior Pending Application

 

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).  TMEP §704.02.  However, please be advised that potentially conflicting marks in prior-filed pending applications may present a bar to registration.

 

Information regarding pending Application Serial No. 78682729 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

However, applicant must address the following issues.

 

 

Identification of Goods

 

The current wording used to describe the goods needs clarification because it is too broad and could contain goods in more than one international class. TMEP §1402.01

 

Applicant may adopt the following identification of goods, if accurate:

 

  “Printed cards featuring background drawings with coordinating stickers” in International Class 16

 

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.

 

For assistance with identifying and classifying goods 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.

 

 

Standard Character Claim

 

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

 

Basis for Filing

 

Applicant must clarify the basis under which the application was filed because the application indicates that it is based on Section 1(b) intent to use, but applicant provided specimens with the application.

 

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 a foreign application filed within six months prior to the United States 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)).

 

Applicant must specify at least one basis for filing and the applicant must submit all of the requirements for the basis asserted. TMEP § 806. Depending on the circumstances, applicant may be entitled to assert more than one basis for filing. In such a case, 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 et seq.

 

Although multi-basis applications are permitted, 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)(l); TMEP §806.02(b).

 

 

Requirements for a Section 1(a) Use in Commerce Basis

 

Where an application is based on use of the mark in commerce, applicant must satisfy the following requirements:

 

(1)  Applicant must submit a statement that “the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”

 

(2)  Applicant must specify the date of first use of the mark anywhere on or in connection with the goods or services;

 

(3)  Applicant must specify the date of first use of the mark in commerce as a trademark or service mark; and

 

(4)  Applicant must submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., showing how the applicant actually uses the mark in commerce).  If the specimen was not filed with the initial application, applicant must submit a written statement that “the specimen was in use in commerce at least as early as the application filing date.”

 

These requirements must be verified by applicant in an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

 

Requirements for a Section 1(b) Intent to Use Basis

 

Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:

 

Applicant has 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 filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

 

/Kristina Kloiber/

Examining Attorney

Law Office 116

(571) 272-5895

(571) 273-9116 Fax

 

 

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.