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 referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Identification of Services

The identification of services is indefinite and must be clarified because as written, the identification is unclear.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  educational services, namely, conferences in the field of transport and the forwarding of mail by air, sea and land, in class 41. 

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.

 

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.  See TMEP §1402.04.

 

 

NOTICE OF IMPLEMENTATION OF THE NEW EDITION OF THE NICE AGREEMENT - CHANGES TO CLASSIFICATION APPLY TO APPLICATIONS FILED ON OR AFTER JANUARY 2, 2007:  Effective January 1, 2007, the Ninth Edition of the Nice Agreement brought about significant changes to the classification of certain goods and services.  All applications filed on or after January 2, 2007, must comply with the classification specified in the Ninth Edition.  TMEP §1401.10. 

 

For applications filed before January 2, 2007, compliance with the Ninth Edition is optional; and any such applicants who opt to follow the Ninth Edition must advise the assigned trademark examining attorney.  See TMEP §1401.11.  The Office’s online Acceptable Identifications of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, has been updated to reflect the classification changes in the Ninth Edition.  See TMEP §1402.04. 

 

Disclaimer

Applicant must disclaim the descriptive wording “FORWARD” apart from the mark as shown because it merely describes the nature of the services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

The word “FORWARD” is defined as, “to send on mail from the address to which it was originally sent.” The applicant’s services are, “educational services, namely, conferences relating to transport and forwarding by air, sea and land.” In other words, the applicant presents conferences that relate to transport and the sending or FORWARDING of mail. As such, FORWARD describes the nature of the services. Please see the attached definition from the Encarta World English Dictionary, North American Edition (http://encarta.msn.com/).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “FORWARD” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Search Results

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

 

 

/Inga Ervin/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 111

571 272-9379

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.