Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/001808

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite because the services are unclear and could include services in other classes.  Any items in bold require deletion or clarification.    TMEP §1402.01.

 

Service mark is being used on flyer and catalog regarding elctronic products trading business is unclear and requires further clarification.  If this is simply advertising for applicant’s own products it is not a service.

 

Class 16:  Printed flyers and catalogs in the field of electronic products and trading businesses.

 

Class 35:  Advertising in the nature of printed flyers and catalogs in the field of electronic products and trading businesses for others.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the recitation are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the present identification.

 

Combined Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Drawing

 

The drawing shows the mark in black and/or white and gray.  However, the application does not specify whether color is a feature of the mark or the mark is intended to be represented only in black and white.  There are only two options for presenting the mark:  (1) color drawings, and (2) black and white drawings.  The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required.  37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e). 

 

(1)   If the proposed mark is not in color, applicant must submit the following statement:  “The mark is not in color.” 

 

(2)   If color is a feature of the proposed mark, applicant must submit both a statement listing all the colors claimed as a feature of the mark and a statement describing where the colors appear in the mark.  The color claim and color location statement must include all the colors in the mark.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.  If any of these colors are not being used as color in the mark, the color location statement must describe where the black, white and gray appear in the mark and state that it constitutes background, outlining, shading or transparent areas and is not part of the mark.  The following format is suggested:  “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark.  The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Jacqueline A. Lavine/

Law Office 101

(571) 272-9185

(571) 273-9101 FAX

jacky.lavine@uspto.gov (INFORMAL EMAIL)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.