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: 2/5/2010

 

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.

 

No Conflicting Marks Found

The trademark examining attorney has searched the Office’s database (on March 27, 2006, as recorded in the history of prior U.S. Registration No. 3312721) 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).

 

Signed Affidavit/Declaration in Support of Application Required

Applicant is required to submit a verified statement in support of the application that relates back to the filing date of the transformed application. TMEP §1904.09(b).  See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark under §1 or §44, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  Applicant should add this declaration to the end of its response, properly signed and dated by a person authorized under 37 C.F.R. §2.33(a).  TMEP §804.01(b).

 

 

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, as of the filing date of this transformed application; 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; and 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)

 

 

Color and Description of the Mark

The drawing shows the mark in color, yet color was not claimed as a feature of the mark.  Specifically, the drawing shows the mark in the colors gray, black and orange.  The colors in the drawing, color claim, and mark description must all agree.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.

 

Further, applicant may not submit a substitute drawing showing the mark in the colors specified in the color claim and/or location statement because this would constitute a material alteration of the mark.  See 37 C.F.R. §2.72; TMEP §§807.07(c), 807.14 et seq. 

 

Therefore, applicant must submit a corrected color claim and/or mark description that agree(s) with the colors in the drawing of the mark.  If black, white and/or gray appear in the mark and are not being claimed as color, applicant must include a statement that the colors black, white, and /or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii). 

 

The following are suggested, if accurate: 

 

            The colors gray, black and orange are claimed as features of the mark.

 

The color black appears in the letters "OPY" and "ONTROL"; the color gray appears in the letters "AR" and "OS" of "ARCCOS"; and the color orange appears in the letters "CC" of "ARCCOS" and in the incomplete oval design.

 

Disclaimer

Applicant must insert a disclaimer of the wording “COPY CONTROL” in the application because this wording merely describes the intended use and purpose of the goods and services identified.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements, or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods and/or services.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods and/or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03.

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10.

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “COPY CONTROL” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

The computerized printing format for the Office’s Trademark Official Gazette requires this standardized format for a disclaimer.  TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

ADVISORY

Due to the substitution of a new basis for registration, republication of the mark is required. 37 C.F.R. §2.35(b)(2).

 

ADVISORY – Persons Who Can Sign Responses

Responses to Office actions must be properly signed.  37 C.F.R. §2.62(b); TMEP §§712, 712.03.  If applicant has appointed an attorney, the attorney must sign the response; applicant cannot sign the response.  37 C.F.R. §11.18(a); TMEP §§605.02, 712.01.  However, if applicant was previously represented by an attorney, and applicant later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney, signed by applicant, is filed.  TMEP §602.01.

 

The only attorneys who can practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).  37 C.F.R. §§11.1, 11.4; TMEP §602.  Other than properly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO.  TMEP §602.06(b); see 37 C.F.R. §11.14(c).

 

If applicant is not represented by an attorney, the response must be signed by applicant or by 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).  37 C.F.R. §2.62(b); TMEP §§605.02, 712.01.

 

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) is not entitled to sign responses to Office actions or to authorize examiner’s amendments and priority actions, unless he/she also has legal authority to bind the applicant, as specified in the paragraph immediately above.  TMEP §§712.01, 804.04.

 

In addition, another person may not sign the name of an authorized signatory on a response; the proper signatory must personally sign or manually enter his/her electronic signature.  TMEP §605.02.

 

 

/Laura Gorman Kovalsky/

                                                                        Trademark Attorney, Law Office 110

                                                                        571.272.9182  phone

                                                                        571.273.9182  fax

                                                                        laura.kovalsky@uspto.gov

                                                                          (E-mail inquiries are welcomed; However,

                                                                        responses are not accepted via e-mail)

 

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 76701230) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 2/5/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76701230&doc_type=OOA&mail_date=20100205 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 2/5/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.