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 76/670132

 

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

 

No Conflicting Marks Noted

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.

 

Color Claim Required

Applicant has submitted a color drawing and color location statement, but has not submitted the required color claim.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(ii).

 

Applicant must identify the colors that are claimed as a feature of the mark using the following format:  “The colors [specify] are claimed as a feature of the mark.” 

 

Color Location Incomplete

The color location statement does not identify all the colors appearing in the drawing of the mark.  The color claim and location statement must identify all the colors in the mark on the drawing.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Therefore, applicant must submit a complete color claim as required above and color description of the mark that reference all the colors appearing in the drawing of the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). 

 

The following color location statement is suggested:  The mark consists of packaging trade dress with a light green background interspersed with yellow lines beginning approximately one-third from the top of the green background. The wording "PROFOOT" appears in the color green against a white background with the first "o" in lower case with a line under it and the entire PROFOOT mark being encased in a rectangle with rounded corners and in the color black.

 

Dotted Lines to Show Position of Mark

Applicant must depict the mark on the drawing using broken or dotted lines to show the mark’s position on the goods or container.  Applicant must show the mark itself using solid lines.  37 C.F.R. §2.52(b)(4); TMEP §807.08.

 

Identification of Goods

The identification of goods and/or services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.  Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. 

In addition, applicant must clarify the identification of goods in International Class 25 by clarifying that the goods are not for orthopedic purposes.  TMEP §1402.01.  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.

 

The applicant may adopt the following, if accurate:

 

• Insoles; Arch Supports; Toe Relief Pads, Elastic Loops for Toes To Relieve Pain of Overlapping Toes; Corn, Bunion and Callous Pads; Toe Inserts For Relieving Bunion Discomfort; Moleskins; and Heel Insert Pads, All for Orthopedic Use. (Class 10).
• Heel Pads, Insoles and Inserts for Footwear for Primarily Non-orthopedic Purposes, Namely, Cushioning and Supporting the Feet. (Class 25).

 

TMEP §1402.01.

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.

 

Conclusion

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

/Linda Michelle Estrada/

Trademark Attorney, Law Office 104

U.S. Patent & Trademark Office

(571) 272-9298

(571) 273-9104 Fax

 

 

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.