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.

 

Mark:  Mona Blended Sheepmilk/Cowmilk Cheese

Serial Number  76/647294

 

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

 

Trademark Act Sections 1 and 45 – Refusal to Register

 

Registration is refused because the application seeks registration of more than one mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01.  In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974).

 

In the present case, elements of the mark  as described in the “Mark” section of the application appear as two separate marks on the specimen.  Specifically, the drawing page shows the following elements:  “MONA BLENDED SHEEPMILK/COWMILK CHEESE.  However, the specimen shows these elements separated to such a degree that they appear as separate marks.

 

Applicant may respond to this refusal by amending the mark (but only if the amendment would not materially alter the mark), or by arguing that the matter on the drawing does in fact constitute a single mark on the specimen(s).  See 37 C.F.R. §2.72; TMEP §§807.14 and 808.15.  In the instant case, the applicant may delete the generic name of the goods, e.g., BLENDED SHEEPMILK/COWMILK CHEESE and the wording (stylized and/or with design, see mark) amend the mark to MONA.

 

NOTE:  The applicant may not amend the mark to include any additional wording or design elements because the applicant did not include this information in the “Mark” field of the application.

 

Delete Color Claim

 

If the applicant amends the mark to MONA, the following requirement is made.

 

The applicant has not submitted a drawing page.  The mark is therefore determined to be MONA BLENDED SHEEPMILK/COWMILK CHEESE. 

 

The applicant has claimed the colors BLUE, WHITE, BLACK and GRAY.  The applicant must either delete this color claim or submit a color drawing showing the words in the colors claimed.  37 C.F.R. §2.52(b)(1).  All applications for marks claiming color must include a drawing showing the mark in color.  Applicant must therefore submit a new drawing that complies with one of the following:

 

(1)   (a) shows the mark in color, with (b) a statement that “the color BLACK, WHITE, BLUE and GRAY are claimed as a feature of the mark,” and (c) a separate description specifying where the colors appears in the mark, i.e., “the color BLUE appears in the letter M, the color Black appears in the letter O,” etc. or

 

(2)   (a) shows the mark in black and white without color lining; and (b) a statement authorizing deletion of the color claim and description.  In the present case, color is not material to the commercial impression of the mark and therefore can be deleted from the drawing of the mark.  37 C.F.R. §2.72; TMEP §§807.07(d) and 807.14 et seq.

 

Standard Character Claim

 

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

 

Filing Basis Not Indicated

 

Applicant must amend the application to specify at least one filing basis in the application; and applicant must also satisfy all the requirements for the basis or bases asserted.  TMEP §806.  In the present case, applicant has failed to set forth or satisfy the requirements for a basis.

 

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 an earlier-filed foreign 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)).

 

Depending on the circumstances, applicant may be entitled to assert more than one of the above bases 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)(1); TMEP §806.02(b).

 

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).

 

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).

 

Where an application is based on a foreign application for the same mark and the same goods or services, applicant must satisfy the following requirements:

 

(1)   File a “claim of priority” within six months of the filing date of the foreign application.

 

(2)   Specify the filing date and foreign country of the first regularly filed foreign application; or state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority;

 

(3)   Specify the serial number of the foreign application upon which the priority claim is based; and

 

(4)   Submit the following verified 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.”  The statement must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.

 

Trademark Act Section 44(d), 15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c).

 

Where an application is based on a foreign registration, applicant must satisfy the following requirements:

 

(1)  Applicant must submit a true copy, a photocopy, a certification, or a certified copy of a registration of the mark in 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 extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002 et seq. and 1004.01 et seq.

 

(2) An English translation of the foreign registration must also be submitted if the foreign certificate of registration is not written in English. The translator should sign the translation.  TMEP §1004.01(b).

 

(3) The following statement must also be included: "Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services as of the application filing date." This statement must be verified in an affidavit or a signed declaration under 37 C.F.R. § §2.20 and 2.33.

 

Trademark Act Section 44(e), 15 U.S.C. § 1126(e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Sample Declaration

 

The following is a properly worded declaration under 37 C.F.R. §2.20.   This declaration may be used in connection with the filing basis requirements noted above.  The applicant should add any necessary statements for each basis to the sample declaration.   At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive;  and that 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)

 

 

 

Search

 

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. §1052(d).  TMEP §704.02.

 

Response Guidelines

 

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

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

 

 

 

 

 

 

 

 

/Mary E. Crawford/

Trademark Attorney

Law Office 102

(571) 272 - 9149

 

 

 

 

 

 

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.