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(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

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 and Classification of Goods

 

The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

Applicant may substitute the following wording, if accurate:

sandwiches; donuts; peanut butter confectionery chips; biscuits; bakery products, namely, short breads; cream puffs; frozen confections, namely, flavored ice pops; cakes; cookies; crackers; crepes; tarts; pies; pastries; bread rolls; dumplings; muffins; unleavened bread; breadcrumbs; ginger bread; spring rolls; bread; cream buns; coffees; chocolates; sponge cakes; mocha coffees; espressos; cocoas; bread for hamburger; coffee flavored syrup used in making food beverages.

 

The wording “Popsicles” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No. 2421400.  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Therefore, applicant must amend the identification of goods by deleting the wording “Popsicles” and substituting the wording “frozen confections, namely, flavored ice pops.” 

 

 

The goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 30.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

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.

 

Scope

 

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.

 

Request for More Information

 

To aid in the examination of this application, and not merely for description of the goods, applicant must submit any informative literature regarding the goods.  If none are available applicant must so state for the record.  37 C.F.R.  Section 2.61(b); TMEP section 814. 

 

Name and Portrait

 

Applicant must clarify whether the name or signature in the applied-for mark identifies a particular living individual.  Written consent is required for registration of a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a specific living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.

 

If the name or signature shown in the mark identifies a particular living individual, then applicant must submit the following: 

 

(1)  A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname or signature as a trademark and/or service mark with the USPTO;

 

and

 

(2)  A statement that “PAPPARICH” identifies a living individual whose consent is of record. 

See TMEP §§813, 813.01(a), 1206.04(a).

 

However, if the name or signature in the mark does not identify a living individual, then applicant must submit a statement that “PAPPARICH” does not identify a living individual.  TMEP §813.01(b).

 

Applicant must clarify whether the portrait shown in the applied-for mark depicts a particular living individual.  Written consent is required for registration of a portrait of an individual, if the likeness depicts a specific living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.

 

If the portrait shown in the mark depicts a particular living individual, then applicant must submit the following: 

 

(1)  A written consent, personally signed by the individual whose likeness appears in the mark, authorizing applicant to register the portrait as a trademark and/or service mark with the USPTO;

 

and

 

(2)  A statement that “the portrait in the mark identifies {indicate the name of the person shown in the portrait}, a living individual whose consent is of record.”

 

See TMEP §§813, 813.01(a), 1206.04(a).

 

However, if the portrait does not depict a living individual, then applicant must submit a statement that “the portrait in the mark does not identify a living individual.”  TMEP §813.01(b).

 

 

Description of the Mark

 

Applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following is suggested, if accurate:

 

The mark consists of the wording “PappaRich THE FATHER OF ALL BUNS.”  Above the wording is the stylized of portrait of a man with a baker’s hat next to a bakery product.

 

Applicant must also submit the following statement: “The mark is not in color.”       TMEP §807.07(f)(ii).

 

 

Guides

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act of 1946, 15 U.S.C. §§1051 et seq.; The Trademark Rules of Practice, 37 C.F.R. Part 2; and the Office’s Trademark Manual of Examining Procedure (TMEP) (5th ed. 2007).  These legal resources are available online at http://www.gov.uspto.report/main/trademarks.htm.

 

“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (5th ed. 2007), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm.  The TMEP is a detailed administrative manual written by the Office to explain the laws and procedures that govern the trademark/service mark application, registration and post registration processes.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations.  To access the TARR database, applicant will need to provide an application serial number or registration number.  The TARR database is available 24 hours a day, 7 days a week.

 

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 the response is filed electronically through TEAS, then applicant should sign the response by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

 

 

 

 

/Fred Mandir/

Examining Attorney

Law Office 105

(571) 272-9192

 

 

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.