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:

 

 

This Office action is in response to applicant’s communication filed on July 6, 2009.

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.  The following requirement(s) and refusals are maintained and continued: New drawing requirement and Applicant’s national citizenship. 

 

In addition, the applicant must respond to the following additional requirements.

 

THREE MARKS IN APPLICATION

 

The applicant’s response indicated that they seek registration for three different marks, two versions of the “QW” design mark and the wording “Qwick Wittz”.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01; see 15 U.S.C. §1051(a)(1); In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enters., Inc., 50 USPQ2d 1632 (TTAB 1999).  As stated in the Office Action dated June 21, 2009, the applied-for mark is the design mark “QW”, the mark that appears on the separate drawing page of the 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.

 

TWO VERSIONS OF THE SAME MARK

 

The amended drawing page shows two versions of the same mark that make the same commercial impression.  The application must be limited to one mark.  37 C.F.R. §2.52; TMEP §807.01.  Therefore, applicant must delete one version of the mark from the drawing page.

 

DRAWING DOES NOT REPRODUCE SATISFACTORILY

 

The drawing is not acceptable because two versions of the same mark appear on the same page and thus, it will not create a high quality image when reproduced.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52.  Therefore, applicant must submit a new drawing  of the selected version showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).

 

If applicant submits a new drawing in the form of a digitized image, it must be in jpg format.  The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).

 

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; see TMEP §§807.13 et seq., 807.14.

 

ISSUE REGARDING APPLICANT’S ENTITY TYPE

 

Applicant must specify his or her national citizenship for the record.  15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.

 

RESPONDING TO THIS ACTION

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.uspto.gov/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.  The signer must personally sign and date the response or manually enter their electronic signature in the signature block.  TMEP §605.02

 

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.

 

 

 

/R.M.Herrera/

Roselle M. Herrera

Trademark Examining Attorney

Law Office 102

P: (571) 272-1909

F: (571) 273-1909

 

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/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.