Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

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

 

Search Results

 

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 must address the following issues.

 

State of Incorporation

Applicant must specify its state of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.

 

Recitation/Classification of Services

The recitation of services is unacceptable as indefinite and may indicate services classified in more than one class.  Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely” and a list of the specific services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following, if accurate:

 

Class 35:             PROVIDING INFORMATION ABOUT THE PRODUCTS AND SERVICES OFFERED BY MERCHANTS HAVING LOCATIONS ALONG THE PHOENIX LIGHT RAIL TRANSIT SYSTEM CORRIDOR FOR ADVERTISING AND SALES PURPOSES

 

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.

 

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.

 

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

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services 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.

 

Color Drawing Issues

The drawing shows the mark in black and/or white and gray.  However, the application does not specify whether color is a feature of the mark or the mark is intended to be represented only in black and white.  There are only two options for presenting the mark:  (1) color drawings, and (2) black and white drawings.  The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required.  37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e). 

 

(1)   If the proposed mark is not in color, applicant must submit the following statement:  “The mark is not in color.” 

 

(2)   If color is a feature of the proposed mark, applicant must submit both a statement listing all the colors claimed as a feature of the mark and a statement describing where the colors appear in the mark.  The color claim and color location statement must include all the colors in the mark.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.  If any of these colors are not being used as color in the mark, the color location statement must describe where the black, white and gray appear in the mark and state that it constitutes background, outlining, shading or transparent areas and is not part of the mark.  The following format is suggested:  “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark.  The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”

 

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 subway cars behind the words shoptheline.net.

 

Standard Character Claim

Applicant has submitted a special form drawing and must delete the standard character claim from the application.  An applicant can make a standard character claim only if the mark on the drawing is presented without any claim to a particular font, style, size or color.  37 C.F.R. §2.52(b); TMEP §807.03(c). 

 

In the present case, the standard character claim is inappropriate because the drawing includes design elements suggestive of rail cars behind the wording and possibly includes color as a feature of the mark.

 

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.

 

 

 

 

 

/Mary Boagni/

Examining Attorney

Law Office 114

571-272-9130

Law Office 114 fax: 571-273-9114

 

 

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.