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 Goods

 

The wording in the identification of goods is indefinite and must be clarified because it is overbroad.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Applicant must amend the identification and may adopt the following:

 

Class 3: Cleaning kits consisting of cleaning preparations, (specify other goods in kit) for water coolers, ice-makers, refrigerators, dehumidifiers and water softeners.

 

Class 11: Electric firebox inserts, namely, (specify by common commercial name) with or without heaters; electric firebox with mantel; portable freestanding electric stove heaters; portable freestanding ice makers

 

Class 19: Fireplace mantels with or without integrated speakers and pre-wired for televisions; fireplace mantels with or without electronic television panel lifters.

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.

 

Prior Registration

 

If applicant is the owner of U.S. Registration No. 2952252, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  See attachment. The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2952252.

 

Specimen

 

The application is incomplete because it does not include the required specimen showing use of the applied-for mark in commerce for the goods in Classes 3 and 19.  An application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each class of goods.  Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

 

Therefore, applicant must submit the following:

 

(1)     A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods based on use in commerce.

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.56(a); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.  In the alternative, applicant may cancel the Section 1(a) basis and rely solely on the already asserted Section 44(e) basis, for which a specimen would not be required.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).

 

In order to amend the Section 1(a) basis to either Section 1(b) or Section 44(e) of the Trademark Act, applicant need only provide a written request to do so.  TMEP §§806.02(g) and 806.03(g).

 

Pending a proper response, registration is refused for those goods based on Section 1(a), because applicant has not provided evidence of use in commerce of the applied-for mark.  15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

 

Please note, applicant has submitted acceptable specimens for Class 11.

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

                                                                              _____________________________

(Signature) 

_____________________________

(Print or Type Name and Position) 

_____________________________

(Date)

Federal Registration Symbol

 

The specimen shows use of the federal trademark registration symbol ® with the applied-for mark.  However, USPTO records do not show that the mark is registered.  Applicant may not use the federal registration symbol until its mark is registered in the USPTO.  After registration, applicant may use this symbol in connection with the specific goods and/or services listed in the registration.  TMEP §§906, 906.02.

 

This information is advisory only.  Applicant need not respond to this issue.

 

Foreign Registration

 

The application specifies both a use in commerce basis under Trademark Act Section 1(a) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(a), 1126(d); 37 C.F.R. §2.34(a)(1), (a)(4).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)  If applicant intends to rely on Section 44(e), in addition to Section 1(a), as a basis for registration, applicant must provide a written statement to that effect.  In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law, and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004.  A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation.  TMEP §1003.04.; or

 

(2)  If applicant intends to rely solely on a use in commerce basis under Section 1(a), while retaining its Section 44(d) priority filing date, applicant must provide a written statement that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(a) basis.  See TMEP §§806.02(f), 806.04(b), 1003.04.

Search Statement

 

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.

 

Further action awaits response to the above.

/RaulCordova/

Law Office 114

571-272-9448

Rightfax 571-273-9448

 

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.