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.

 

Search Results – With respect to the Word Mark BEACH BUDDY

 

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. 77549977 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.

 

 

Search of Office Records of Photographs of Goods Deferred

 

Although the Applicant has identified the mark as a standard character mark, Applicant has also included a photograph of the goods.  The photographs of the goods do not appear to be a part of the mark.  Therefore, a search of the Office records is deferred until applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

 

 

Drawing

 

 

 

The application shows two different marks:  BEACH BUDDIES and photographs of the goods appear on the separate drawing page and BEACH BUDDIES appears in the body of the written application.

 

In an application that shows two different marks, one in the body of the written application and one on a separate drawing page, the mark on the separate drawing page controls for purposes of determining what the mark is.  In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001); TMEP §807.01.

 

Therefore, the applied-for mark is BEACH BUDDIES and the photographs of the goods, the mark that appears on the separate drawing page of the application.

 

However, it appears that the Applicant will be establish use of the mark in commerce in connection with the mark that consists of the word and the photographs of the goods.  In other words, it appears that Applicant intended to submit an application for the word mark BEACH BUDDIES, but inadvertently included photographs of the goods on the drawing page.  Applicant may not amend the application to delete the photographs of the goods because the deletion of the photographs would be considered a material alteration of the drawing. 

 

A mark cannot be amended if the change would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(c).

 

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).  “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  Visa Int’l Serv. Ass’n v. Life Code Sys., Inc.,220 USPQ 740, 743 (TTAB 1983).  “That is, the new and old forms of the mark must create essentially the same commercial impression.”  In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); see TMEP §807.14.

 

Therefore, Applicant may wish to consider filing a new application for the exact mark for which it is seeking registration.

 

Identification of Goods

 

The identification of goods must be clarified because it is unacceptable as indefinite.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

1. Beach towel containing a pillow, side pockets and a shoulder carrying strap in Class 24
2. Beach Jackets in Class 25
3. Life preserver in the nature of a beach safety belt in Class 9 or Belts containing compartments for storing identification and valuables in Class 25

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.

 

Multi-Class Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then 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; 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).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Trademark Counsel Suggested

 

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.  Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.

 

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

 

 

 

 

/Susan A. Richards/

Trademark Attorney

Law Office 103

(571) 272-8266

 

 

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.