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  76/663324

 

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

 

No Likelihood of Confusion

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02

 

The applicant is hereby requested to address the following issue(s).

 

Identification of Goods and Services

 

The current identification of goods and/or services is unacceptable because it is indefinite. Applicant must amend the identification to address this issue; applicant is highly encouraged to refer to the suggested language below.  TMEP §§1401.05, 1402.01 and 1402.03.

 

Please be advised that applicant must adopt the appropriate international classification number for the goods and services identified in the application. The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services. 37 C.F.R. §6.1; TMEP §§1401 et seq. Applicant may adopt the following identification, if accurate:

 

International Class 14: “MEDALS, NAMELY, non-leaded emblem MADE OF BRONZE with brownISH black powder coat finish to commemorate the memory of all airborne veterans.”

 

For assistance with identifying and classifying goods and/or services 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.

 

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.

Specimen

The application is incomplete because it does not include the required specimen showing use of the applied-for mark in commerce for the goods and/or services identified in the application.  An application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §904.

 

Therefore, applicant must submit the following:

 

(1)   A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; and

 

(2)    The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.56(a); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of 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.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “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.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.01(b).

 

Pending a proper response, registration is refused because applicant has not provided evidence of use in commerce of the applied-for mark.  15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Disclaimer Requirement

 

Applicant must disclaim the wording “AIRBORNE” apart from the mark as shown because it merely describes a feature of the applicant’s goods as identified, namely, the type of military veterans Applicant’s emblems are commemorating.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “AIRBORNE” apart from the mark as shown.

 

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

 

Description of the Mark

 

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The following is suggested:

 

The mark consists of two concentric circles with the wording “AIRBORNE” across the center top portion between the two concentric circles.  Within the smaller circle is a parachute design, superimposed on top of which is a airplane.

 

Advisory

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.

 

Response Guidelines

 

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 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.

 

/Peter Cheng/

Trademark Examining Attorney

Law Office 114

Phone - (571)272-9021

Fax No. - (571)273-9114

 

 

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.