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  76/667534

 

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

 

NO CONFLICTING MARKS NOTED

 

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.

 

GEOGRAPHIC SIGNIFICANCE

 

The applicant must specifically state whether any aspect of its services is or will be rendered in, or has any other connection with, the geographic location known as Tahiti.  The applicant must also state whether the clothing sold through the applicant’s stores will originate, in whole or in part, from Tahiti.  37 C.F.R. §2.61(b); TMEP §1210.03.

 

If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and applicant’s services are performed, at least in part, in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the services originate.  In re Chalk’s International Airlines, Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); TMEP §1210.04(b).

 

RECITATION OF SERVICES

 

The recitation of services is unacceptable as indefinite.  TMEP §1402.01.  Specifically, the applicant must provide the form of the “retail on line services.”

 

The applicant may adopt the following recitation, if accurate: 

 

“retail store services and online retail store services featuring clothing, namely, swimwear, shirts, shorts, sandals and beach shoes,” in International Class 35. 

 

Additions Not Allowed:  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.

 

On-line Acceptable Identification of Goods and Services Manual information:  For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:

 

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

 

The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services.  While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.

 

PRIOR REGISTRATION OWNED BY APPLICANT

 

If the applicant is the owner of U.S. Registration No. 1839040, copy attached, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:

 

The applicant is the owner of U.S. Registration No. 1839040.

 

APPLICANT’S ENTITY – CLARIFICATION REQUIRED

 

The application states that the applicant is a limited liability company, however, the drawing page states that the applicant is a corporation.  While it is noted that the entity designator in the applicant’s name, LLC, suggests that the applicant is, in fact, a limited liability company, the applicant must clarify this issue for the record.

 

ADVISORY – RESPONSE SIGNATURE

 

Responses to Office actions must be properly signed.  TMEP §712.  If the applicant has retained an attorney, the attorney must sign the response; the applicant cannot sign the response.  37 C.F.R. §10.18(a); TMEP §602.  However, if the applicant was previously represented by an attorney, and applicant later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney signed by the applicant is filed.  Id. 

 

The only attorneys who can practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state or (2) Canadian agents/attorneys who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).  And Canadian attorneys can only represent Canadian applicants. 

 

Foreign attorneys (other than duly authorized Canadian attorneys) cannot sign responses or otherwise represent applicants before the USPTO.  37 C.F.R. §§10.1(c) and 10.14.  In addition, paralegals and secretaries cannot sign responses for attorneys.

 

Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  TMEP §§602, 602.03, 603.05.

 

If the applicant is not represented by an attorney, the response must be signed by applicant or by someone with legal authority to bind the applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) is not entitled to sign responses to Office actions or to authorize examiner’s amendments and priority actions, unless he or she also has legal authority to bind the applicant, as specified in the paragraph immediately above.  See TMEP §§712.03 and 804.04. 

 

RESPONSE GUIDELINES

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number. The response must be signed by someone properly authorized to act on behalf of the applicant, as further explained in the previous section.

 

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

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone:  (571) 272-9320

Fax: (571) 273-9106 (formal responses)

 

 

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.