Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

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).

Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Basis Unclear

Applicant filed the application with an intent-to-use basis under Trademark Act Section 1(b), but also submitted a specimen with the application, which is not required for an intent-to-use application. See 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b). Filing an intent-to-use application under Section 1(b) is permissible even if applicant has already begun to use the mark in commerce. See TMEP §903. However, applicant is advised that because this application was filed under Section 1(b), registration will not be granted until applicant files either an acceptable amendment to allege use under Section 1(c) or an acceptable statement of use under Section 1(d). See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

Applicant may file an amendment to allege use at any time between the application filing date and the date the trademark examining attorney approves the mark for publication. 37 C.F.R. §2.76(a); TMEP §1104.03. If applicant does not file a timely and acceptable amendment to allege use or files and then withdraws an amendment to allege use, and the Office then issues a notice of allowance under 15 U.S.C. §1063(b)(2), applicant must file a statement of use within six months after the date of issuance of the notice of allowance or within a previously granted extension of time for filing the statement of use. 37 C.F.R. §2.88(a); TMEP §1109.04. See TMEP §§1104 et seq. regarding requirements for amendments to allege use and TMEP §§1109 et seq. regarding requirements for statements of use.

Identification of Goods

The examining attorney may require an amendment of the identification language to accurately describe the goods. In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979). For assistance with identifying and classifying 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.

Specific wording in the identification of goods noted below is indefinite and must be clarified as indicated. See TMEP §1402.01. The specimens submitted with the application indicate that the scooter is a toy scooter and not class 12 motor scooters used as transportation. Applicant must amend the identification to correctly identify the goods.

“folding toy scooter” in International Class 28.

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.

/Christopher L. Buongiorno/

Law Office 102

(571) 272-9251

Christopher.Buongiorno@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.