Offc Action Outgoing

This letter responds to applicant’s response filed on December 31, 2007. The trademark examining attorney has reviewed applicant’s response and has determined the following:

Identification/Classification of Goods

The proposed amendment to the identification cannot be accepted because the following wording refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing: “greeting cards, gift cards, gift bags, gift wrap, tissue, ribbon” (as these are not technically “stationery” items, and not all of the items are Class 016 items, e.g. paper ribbons are in Class 016 but basic ribbons made of textiles/fabric are Class 026); “sport bottles, key chains, lanyards” (as these are not truly “school supplies,” but rather loosely related items that might be brought to school in a backpack or attached to a backpack; also, none of these items are in Class 016. Sport bottles sold empty are in Class 021, key chains may be in multiple classes depending on the material composition, and lanyards for holding keys, badges, etc. are in Class 022); “religious medals, religious necklaces, religious bracelets and anklets, religious rings, religious earrings, prayer stones, prayer medals, zipper pulls” and “religious key chains” are not truly “religious items” in Class 016 as contemplated by the Office (e.g., the jewelry items are primarily jewelry and decorative items in Class 014 as opposed to being used in religious ceremonies or for formal liturgical reasons, and the zipper pulls in Class 026 and key chains appear to have no religious significance or connection at all and are in and multiple classes, as discussed above); lastly, the “beanbag pillow chairs, beanbag pillows” are not toys but furniture items or accessories, likely in Class 020.

While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07. Therefore, this wording should be deleted from the identification.

Furthermore, the wording “pen/pencil holder,” “tape dispenser,” “sticky notes,” “magnetic pads,” “tags,” “backpacks,” “pen/pencil cases,” “lunch boxes,” “cloth/ribbon bookmarks,” “rulers,” “book bags,” “tote bags,” “white boards,” “paint sets,” “activity sets,” “tablecloths,” “placemats,” “pillows,” “towels,” “facecloths,” “beach towels,” “potholders,” “beach/pool cover-ups,” “balls,” “dress up costumes,” “floor games,” “video games,” “activity kits,” “craft kits,” “handheld video games,” “beach/pool toys,” and “beach pails and shovels” in the identification of goods is indefinite and/or misclassified and must be clarified. In general, applicant must replace the slashes (e.g., “pen/pencil,” “cloth/ribbon,” “beach/pool”) and substitute “or” or “and” (e.g., “pen or pencil holders” or “pen and pencil holders”). Applicant must specify: that the tape dispenser is for “adhesive” tape, that the sticky notes are “adhesive note pads,” that the magnetic pads are magnetic “writing” pads, that the tags are made of “paper,” that the rulers are “ungraduated” or for “drawing” to remain in Class 016 (“graduated” rulers are in Class 009), that the white boards are “dry erase writing white boards,” that the paint sets are “for children” (otherwise they include Class 002 paint items), that the activity sets are “comprised of… {SPECIFY items by common commercial name, beginning with a listing of Class 016 item(s), e.g., flash cards, coloring books, etc.}, specify the type of balls, e.g., “beach balls,” “golf balls,” clarify that the dress up costumes are “for Halloween” to remain in Class 025 (as opposed to costume masks in Class 028), that the floor games are “comprised of {SPECIFY the type of game or primary components, e.g., play mats for use with toy vehicles, golf putting practice mats, etc.}, that the video games are “stand alone video game machines” in Class 028 (as opposed to video game software in Class 009), the primary components of the activity kits, beginning with a listing of Class 028 item(s), e.g., children’s multiple activity toys sold as a unit with printed books, etc., that the craft kits are “hobby” craft kits for {INDICATE specific use, e.g., making model airplanes, designing doll houses, etc.}, that the handheld video game is a “handheld unit for playing video games,” and that the beach pails and shovels are “toy beach pails and shovels.”

The remaining items not discussed are definite but misclassified. Applicant must amend the application to classify the goods as follows, if applicant still wants these items: “backpacks,” “book bags,” and “tote bags” are in Class 018; “lunch boxes” are in Class 021; “paper tablecloths” are in Class 016, while “non paper tablecloths” are in Class 024; “paper placemats” are in 016, while “textile and plastic placemats” are in Class 024; “pillows” are in Class 020; “towels, face cloths, beach towels and potholders” are in Class 024. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

Lastly, applicant must put a semi colon between the wording “nightgowns” and “footwear” in Class 025 so as to separate the items.

TMEP §1402.01. Applicant may adopt the following amended identification, if accurate:

· Graduated rulers [properly in INT. CLASS 009]

· Books, namely, children’s books, comic books, coloring books, paper doll books, inspirational books, activity books, learning books; stationery, namely, paper and note cards; office supplies, namely, pens, pencils, markers, highlighters, staplers, paperweights, pen and pencil holders, adhesive tape dispenser, notepads, adhesive note pads, magnetic writing pads, paper tags, calendars; school supplies, namely, notebooks, erasers, pen and pencil cases, lunch bags, metal bookmarks, paper bookmarks, cloth and ribbon bookmarks, ungraduated and drawing rulers, folders, binders, crayons, chalk, chalkboards, dry erase writing white boards, dry erase markers, markers, colored pencils, paint sets for children, activity sets comprised of {SPECIFY items by common commercial name, beginning with a listing of Class 016 item(s), e.g., flash cards, coloring books, etc.}; religious items, namely, religious books, religious activity books, prayer books; linens, namely, paper placemats and paper tablecloths [INT. CLASS 016]

· Backpacks, book bags, tote bags [properly in INT. CLASS 018]

· Pillows [properly in INT. CLASS 020]

· Lunch boxes [properly in INT. CLASS 021]

· Tablecloths, not of paper; place mats, not of paper; towels, facecloths, beach towels, pot holders [properly in INT. CLASS 024]

· Clothing, namely, pants, shirts, t-shirts, tank tops, capris, shorts, bathing suits, beach or pool cover-ups, belts, dresses, skirts, socks, shawls, scarves, tights, underwear, pajamas, bathrobes, nightgowns footwear, namely, shoes, shoelaces, flip flops, sneakers, sandals, slippers, boots; outerwear, namely, jackets, coats, sweatshirts, raincoats, hats, golf hats, straw hats, baseball hats, soft hats, knit hats, scarves, mittens, gloves; dress up Halloween costumes and costumes for use in role-playing games [INT. CLASS 025]

· Toys, namely, stuffed toy dolls, plastic dolls, porcelain dolls, doll clothing, doll accessories, doll carry cases, {SPECIFY kind, e.g., beach balls, golf balls, etc.} balls, kick balls, rubber balls, footballs, baseball bats, softballs, costume masks, board games, floor games in the nature of play mats for use with toy vehicles, golf putting practice mats, etc., {SPECIFY kind, e.g., coin-operated, stand alone video game machines, etc.} video games, activity kits in the nature of children’s multiple activity toys sold as a unit with printed books, puzzles, hobby craft kits for making model airplanes, designing doll houses, etc, handheld unit for playing video games, doll houses, toy pocketbooks, toy makeup, beanbag balls, stuffed toy animals, bendable dolls, bendable animals, bath toys, jump ropes, hoops, jacks, beach and pool toys, toy beach pails and shovels, toy umbrellas, toy coin purse; stuffed toy animals [INT. CLASS 028]

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 or services that are not within the scope of those set forth in the present identification.

For further 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.

Amended Classification

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to add the International Classes as shown above. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

Multiclass Application

Applicant must clarify the number of classes for which registration is sought. The submitted filing fees may be insufficient to cover all the classes in the application. Specifically, the application identifies goods that are classified in more than three international classes, however applicant paid the fee for only three classes.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1) Applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and

(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

Filing Basis Required for Added Classes

Applicant has not specified a filing basis for the added classes. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806. An application may be filed based on any of the following:

(1) Use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

(2) A bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

(3) A claim of priority, based on an foreign application filed within six months of the filing date of the U.S. application, under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c)); and/or

(4) A foreign registration of a mark in applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)).

Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.

Depending on the circumstances, applicant may be entitled to assert more than one of the above bases for filing. In such a case, applicant must: (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies. See 37 C.F.R. §2.34; TMEP §§806.02 et seq.

Although multi-basis applications are permitted, applicant may not assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

Section 1(a) Requirements

An application based on use of the mark in commerce must include the following:

(1) The following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date”;

(2) The date of first use of the mark anywhere on the goods or in connection with services;

(3) The date of first use of the mark in commerce as a trademark or service mark;

(4) One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce). If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date.”

(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20 and 2.33, of the above statements and dates of use.

15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

Section 1(b) Requirements

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).

If applicant has questions about its application or needs assistance, please telephone the assigned trademark examining attorney directly at the number below.

Toby E. Bulloff

/Toby E. Bulloff/

Trademark Examining Attorney

Law Office 117

p: (571) 270-1531

f: (571) 270-2531

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.