Offc Action Outgoing

The examining attorney has reviewed the applicant’s response, filed on 5/14/10, to the non-final Office action mailed on 4/5/10, and has determined as follows:

Registration is refused because applicant does not appear to have been entitled to use the mark as of the filing date of the application.

The proposed amended identification of goods is acceptable.

The multi-class application requirements are moot since the applicant has confined the proposed amended identification to one class.

The requirement that the applicant amend the description of the mark is continued.

The applicant must submit a new drawing of the mark. Because this is a new requirement, this Office action is not being made final.

The disclaimer of “IL” apart from the mark as shown is acceptable. However, depending on the nature of the amended drawing (please see number 5 above), this disclaimer may at a later date no longer be appropriate, and may need to be deleted.

The requirement that the applicant comply with the information requirement is continued.

Please see below for details of numbers 1, 4, 5 and 7 above.

REGISTRATION REFUSED BECAUSE APPLICANT DOES NOT APPEAR TO HAVE BEEN ENTITLED TO USE THE MARK AS OF THE FILING DATE OF THE APPLICATION

Registration is refused because applicant does not appear to have been entitled to use the mark as of the filing date of the application. Trademark Act Section 1, 15 U.S.C. §1051; see TMEP §1201.02(b). The application identifies the owner of the mark as Dale Stredney, an Illinois corporation; however, the applicant’s response to the requirement in the first Office action that it clarify the applicant entity information indicates that the owner of the mark was Heartland Select LLC, an Illinois limited liability company.

An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 15 U.S.C. §§1051, 1126; TMEP §§1201, 1201.02(b). If the identified applicant does not own or is not entitled to use the mark on the application filing date, the application is void. See 37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007); Am. Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000) (holding an intent-to-use application void because it was filed by an individual when a partnership was entitled to use the mark on the application filing date); TMEP §1201.

Applications filed in the name of the wrong party cannot be cured by amendment or assignment. 37 C.F.R. §2.71(d); see TMEP §803.06.

APPLICANT MUST SUBMIT A NEW DRAWING OF THE MARK

The drawing is not acceptable because the mark is on its side: rather than showing the flame design above a stylized grill, as the applicant intended, it shows the flame design to the side of the stylized grill. Therefore, the drawing of record will not create a an accurate image of the mark 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 showing a clear depiction of the mark, with the flame design above the stylized grill. 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.

Special form drawings submitted electronically via the Trademark Electronic Application System (TEAS) must be attached as a digitized image file. The requirements for an electronically submitted special form drawing are as follows:

(1) The mark should appear in black on a white background, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.;

(2) All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.; and

(3) The digitized mark image must be in jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.

37 C.F.R. §§2.52(b), (b)(1), 2.53(b)-(c); TMEP §§807.04(a), 807.05(b)-(c), 807.07(a)(i)-(a)(ii).

In addition to the above, the Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.

A special form drawing submitted on paper must comply with the following requirements:

(1) Depict the mark in black and white, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.

(2) Depict the mark using a pen or a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.; and

(3) Depict the mark no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.

37 C.F.R. §§2.52(b), (b)(1), 2.54(b), (d)-(e); see TMEP §§807.04(a), 807.06(a), 807.07(a) et seq.

For marks not depicted in color, the mark itself should be depicted in black on a white background. 37 C.F.R. §2.52(b).

Further, the Office prefers that the drawing be on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm wide and 27.9 to 29.7 cm long). One of the shorter sides of the sheet should be the top edge and include the caption “DRAWING PAGE.” 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).

The Office strictly enforces the drawing requirements.

REQUIREMENT THAT APPLICANT AMEND THE DESCRIPTION OF THE MARK IS CONTINUED

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.

Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:

The mark consists of a stylized symbol of a flame positioned above a stylized grill. The stylized grill is represented by a horizontal line, and beneath this line, a second line with a downwardly depending “leg” representing the grill handle.

INFORMATION REQUIREMENT CONTINUED

In the first Office action, the examining attorney issued an information requirement to which the applicant has not responded. Specifically, applicant must provide a written statement explaining whether the goods will be manufactured, packaged, shipped from, sold in or will have any other connection with the geographic location named in the mark, i.e., Illinois or “IL.” See 37 C.F.R. §2.61(b); TMEP §1210.03. The examining attorney assumes from the applicant’s entry of the disclaimer of “IL” that the goods do, in fact, originate in Illinois, but the applicant has not explicitly responded to this question. Therefore, the information requirement is continued.

GENERAL RESPONSE GUIDELINES

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.gov.uspto.report/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

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail address: nancy.clarke@uspto.gov

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.