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  76/657140

 

This letter responds to the applicant’s communications filed on September 14, 2006 and September 28, 2006.

 

The refusal(s) to register concerning the specificity of the identification of goods for International Classes 22 and 25 and the recitation of services for International Class 39 are continued and made Final.

 

Identification of Goods

 

International Class 22:

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:  Padding and stuffing materials, namely, feather duck down and polyfill goose down for stuffing.  TMEP §1402.01.

 

The wording “thermal fill and thermal loft” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

“Bags, namely, paper, plastic, cotton, polyester” are unacceptable because they exceed the scope of the previous identification of goods since  which were “general utility bags for commercial use.” 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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.  Accordingly, these items are required to be deleted from the identification of goods and applicant may reinsert “general utility bags for commercial use” if accurate.

 

International Class 25:

 

“Shirts, jackets, pants and shorts” exceed the scope of the identification of goods because they were not included within the amended identification of goods as amended on September 14, 2006.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.  Accordingly, these items are required to be deleted from the identification of goods.

 

International Class 39:

 

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:  Transport of goods by rail, air, truck, and boat; packaging of articles for transportation and storage of goods in a warehouse prior to transport; arranging for wrapping services for baggage protection during travel  TMEP §1402.11.

 

“Coordination of delivery through brokers” is unacceptable because it goes beyond the scope of the recitation of services since it was never listed or suggested in the application prior to be recited in the September 28, 2006, response.  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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.  Accordingly, these services are required to be deleted from the recitation of services.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (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 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., submit arguments and/or evidence as to why the refusal 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.

 

If applicant does not respond within six months of the mailing date of this final action, then the following goods and/or services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  All of International Class 22; “Shirts, jackets, pants and shorts” in International Class 25 and “packaging and storage of goods in a wharehouse before dispatch, coordination of delivery through brokers in International Class 39.  The application will proceed forward for the remaining goods and/or services/class(es), “Clothing, namely, jeans, footwear and headgear, namely, hats and caps,” International Class 25 and “Transport of goods by rail, air, truck and boat and arranging for wrapping services for baggage protection during travel” in International Class 39.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Edward Nelson/

Trademark Attorney

Law Office 106

(571) 272-9202

(fax)  (571) 273-9106

 

 

 

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.