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: 6/8/2009

 

General Search Clause

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Identification of Goods Indefinite

So the goods conform to the identification manual, referenced below, the following changes are required:

Class 5 – Add “namely” after “dental materials”.

Class 10 – Add “namely” after “dental and surgical instruments and apparatus”.

Class 16 – Substitute “boards of paper or cardboard” for “materials”.

 

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.

 

Unsigned Application – Signed Verification Required – Section 44 – Sample Declaration

The application was not signed and verified, both of which are application requirements.  15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33, 2.34(a)(2)-(4).  Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §§2.20, 2.33, the statements specified further below.  15 U.S.C. §§1051(b)(3), 1126(d), (e); 37 C.F.R. §2.33(b)(2), (c); TMEP §§804.02, 806.01(b)-(d).

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and properly signing the declaration appearing towards the end of the TEAS response form by either (1) entering in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/); (2) e-mailing the completed form from within TEAS to a second party for his/her electronic signature, which will then be automatically returned to the original preparer for submission with the response form; or (3) attaching a jpg or pdf image of a declaration under 37 C.F.R. §2.20 (see statements and declaration paragraphs below), together with a pen-and-ink signature.  See 37 C.F.R. §§2.33(d), 2.193(c)(1)(iii); TMEP §804.05.  For each method, applicant must either personally sign or manually enter his/her electronic signature and provide the date of “signing.”  TMEP §804.05; see TMEP §804.01(b).  Applicant should also set forth the signatory’s name and position beneath the signature.  See TMEP §§712 et seq., 804.05.

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed and dated.  See 37 C.F.R. §§2.20, 2.33; TMEP §§804.02, 804.05, 806.01(b)-(d).

 

STATEMENTS:  He/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use the mark in commerce; that applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

 

 

DECLARATION:  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 therefrom, declares that 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)

 

Insufficient Fees – Application

The application identifies goods and services that are classified in at least four classes; however, the fees submitted are sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional classes. 

 

Statement of Bona Fide Intent to Use the Mark Required – Section 44 Application

The application does not include the required statement of applicant’s bona fide intention to use the mark in commerce.  See 15 U.S.C. §1126(d)(2), (e); 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii); TMEP §1008.  Therefore, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:

 

As of the filing date of the application, applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application, and continues to have such a bona fide intent.

 

37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii); TMEP §1008.

 

 

/Hannah M. Fisher/

Trademark Examining Attorney

Law Office 111

Phone: (571) 272-9160

Fax: (571) 273-9111

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/8/2009 FOR

APPLICATION SERIAL NO. 76696119

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76696119&doc_type=OOA&mail_date=20090608 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/8/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.