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  76/664174

 

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

 

1.)    STANDARD CHARACTER CLAIM REQUIRED

 

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).

 

2.)    IDENTIFICATION / CLASSIFICATION OF SERVICES

 

The identification of services presently reads as follows:  “annual event organized by the New York Design Center at which; the newest commercial furnishing products are introduced to the professional architecture and design community and practitioners in New York City,” in International Class 42.

 

The identification of services is indefinite and must be clarified because, as worded, the exact nature of the service is unclear.  TMEP §1402.01.  Specifically, the nature of the ‘annual event’ is not specified.  Moreover, applicant must refrain from using its name or other trademarks in the identification, and must instead substitute common or generic terminology to describe the services.  Therefore, for proper identification and classification of the services, applicant must amend the identification to more clearly describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  Applicant may adopt the following identification and classification of services, if accurate: 

 

“arranging and conducting an annual tradeshow exhibition at which the newest commercial furnishing products are introduced to the professional architecture and design community and practitioners in New York City,” in International Class 35.

 

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 services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

3.)    DATES OF USE – INTERPRETED AS AFTER FILING DATE

 

The dates of use in the application specify the following date or dates:  2006.  The Office interprets this date as the last day of 2006, or December 31, 2006.  TMEP §903.07.  Thus, the identified date of use is later than the date on which the application was filed (i.e., August 3, 2006).  For an application based on use in commerce, applicant must have used the mark in commerce at least as early as the application filing date.  Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1); TMEP §§806.01(a) and 901.

 

If applicant used the mark in commerce on or before the application filing date, applicant must (1) correct the dates of use, and (2) verify the corrected dates with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

If applicant did not use the mark in commerce on or before the filing date, applicant may substitute a different basis for filing, if applicant can meet the requirements for the new basis.  TMEP §§806.01 et seq. and 806.03 et seq.  In this case, applicant may wish to amend the application to assert an intent to use basis, the requirements of which are set forth below.

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:

 

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.

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

 

SEARCH RESULTS

 

It is noted that 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.

 

 

 

 

/Martha Santomartino/

Trademark Attorney

Law Office 112

(571) 272-9416

 

 

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.