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

 

 

Prior Pending Application

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Information regarding pending Application Serial No. 77073607 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

However, applicant must address the following issues.

 

 

Identification of Services

 

The current wording used to describe the services needs clarification because it is too broad and could contain services in more than one international class. TMEP §1402.01. In particular, applicant must clarify the nature of its development services in Class 37. If the services are real estate development services, they are properly classified in Class 37; however, if they are business development services, they are properly classified in Class 35.

 

Applicant may adopt the following identification of services, if accurate:

 

“Real estate development and construction management in the field of commercial, office, manufacturing, residential, and hotel properties” in International Class 37

 

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 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 the identification of services in Classes 36 and 42 is acceptable as written.

 

 

Information on Multiple Class Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those services based on actual use in commerce under Trademark Act Section 1(a):

 

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

 

(2)   Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class of services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.05, 1403.01 and 1403.02(c).

 

Please note that the specimens of record are acceptable for classes 36, 37, and 42 only.

 

 

Color Claim and Description

 

Applicant claimed the colors black, white and pantone 1945; however, applicant must provide a color claim and color location statement using common color names, e.g., magenta, yellow, turquoise.  Commercial color names must be supplemented with a generic description of the colors.  TMEP §§807.07(a)(i) and (a)(ii). 

 

In addition, the color claim and color location statement disagree with the colors depicted in the mark shown on the drawing.  The drawing shows the mark in the colors gray, white, and red; however the color claim specifies that the mark is in the colors black, white and red and the location statement specifies that the letters are in black.  It appears that the drawing on the drawing page may be a poor quality image and may have been printed with an older print cartridge that resulted in lighter colors on the drawing page. The color drawing, color claim and location statement must agree.  37 C.F.R. §2.52(b)(1); TMEP §807.07(c).

 

Therefore, applicant must submit either: (1) a corrected color claim and location statement that agree with the colors depicted in the drawing of the mark, or (2) a color drawing that agrees with the color claim and location statement. Applicant should note that if applicant chooses option (1) and amends the color claim and location statement to agree with the colors in the drawing, applicant must also submit specimens that show the lettering in gray.

 

If applicant chooses option (1), the following color claim and location statement are suggested: 

 

Color claim:  “The colors gray, white, and red (pantone 1945) are claimed as a feature of the mark”; and

Color location statement:  “The color white appears in the three white lined quarter moon shapes inside the circle, the color red (pantone 1945) appears in the circle, and color gray appears in the letters CSM positioned along side the design.”

 

If applicant chooses option (2), the following color claim and location statement are suggested:

 

Color claim:  “The colors black, white, and red (pantone 1945) are claimed as a feature of the mark”; and

Color location statement:  “The color white appears in the three white lined quarter moon shapes inside the circle, the color red (pantone 1945) appears in the circle, and color black appears in the letters CSM positioned along side the design.”

 

 

If applicant submits a substitute drawing, applicant is advised that amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.

 

 

/Kristina Morris/

Examining Attorney

Law Office 116

United States Patent and Trademark Office

Phone: (571) 272-5895

Fax: (571) 273-9116

 

 

 

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.