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  76/646175

 

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

 

No Conflicting Marks Found

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

Color Drawing Required

Applicant must submit a new drawing that shows the mark in color.  The applicant has submitted a color claim and description, but has failed to submit a color drawing.  In the present case, color(s) is material to the commercial impression of the mark; its deletion would be considered a material alteration of the mark, and is therefore not permitted.  37 C.F.R. §2.72; TMEP §807.07(d) and 807.14 et seq.

 

Deletion of Informational Matter

Applicant must submit a new drawing with “the informational matter contained on the aerosol can” deleted because it is not part of the mark.  TMEP §§807.02 and 807.14(a).

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant must identify the goods with more specificity.  The applicant may adopt the following identification, if accurate: 

 

            Athletes’ foot preparations, in International Class 5.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and services.

 

http://tess2.gov.uspto.report/netahtml/tidm.html 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Specimen of Use Required

This application does not include a specimen for any of the identified class(es) of goods.  A specimen showing use of the mark in commerce for each class of goods is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a).  TMEP §904. 

 

Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in commerce for the goods listed in the application) for each class of goods showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.56(a); TMEP §§904.01 et seq. and 904.09.

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. 

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

                        _____________________________                                  

                                    (Signature)

 

                        _____________________________

                        (Print or Type Name and Position)

 

                        _____________________________

                              (Date)

 

If applicant cannot comply with the requirement for a new specimenfor the Section 1(a)basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert a Section 1(b) basis.

 

Claim of Ownership

If the applicant is the owner of Registration No. 1776197, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36; TMEP section 812.

 

Concurrent Use Claim Inquiry

Applicant must (1) confirm its intention to assert a concurrent use claim or (2) delete the concurrent use claim from the application record.  15 U.S.C. §1052(d); TMEP §1207.04(c). 

 

In an application asserting concurrent use, an applicant seeks registration of its mark for an explicitly limited geographical area within the United States (e.g., the states of Maryland and Pennsylvania) and lists one or more parties who are known to have rights in the same mark in other specified geographic locations within the United States. These other parties may own trademark applications or registrations, or they may have only common law rights in a mark.  TMEP §§1207.04 et seq.

 

Corrected Translation Required

Applicant must remove the translation of the English wording.  37 C.F.R. §2.61(b); TMEP §809.  In the present case, the wording “HONGO” needs translating for the record.  The following translation statement is suggested:  “The English translation of the word HONGO in the mark is FUNGUS.”

 

Disclaimer

The applicant must disclaim the descriptive wording "HONGO" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive the term means fungus and the product is used to treat fungus.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use HONGO apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/tkhl/

Tarah K. Hardy Ludlow

Trademark Attorney

Law Office 110

571-272-9361

571-273-9110 fax

 

 

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.