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  77/003777

 

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

 

 

Search of Office Records

 

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

 

 

Identification of Goods

 

Portions of the identification include open-ended wording.  TMEP §§1402.01 and 1402.03(a).  The identification must be specific and all-inclusive.  The applicant may adopt the following identification, if accurate: 

 

Class 11 – Apparatus and installations for water supply and sanitary purposes, namely, [specify each item by its common commercial name]; sanitary ware, namely, toilets and urinals, toilet bowls, pans and cisterns; bidets; toilet seats; sinks, wash basins, hand basins, vanity basins, baths, showers; tapware, namely, [specify, e.g., tap water faucets]; replacement parts for the aforesaid goods; plumbing fittings for the aforesaid goods, namely, [specify each item by its common commercial name]; accessories for the aforesaid goods, namely, [specify each item by its common commercial name].

 

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.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

 

Significance of Term

 

Applicant must specify whether “INVISI” has any significance (other than trademark/service mark significance) in the relevant trade or industry, or any meaning in a foreign language.  37 C.F.R. §2.61(b).  If said term does not have significance, applicant may enter the following:

 

     “INVISI” has no significance in the relevant trade or industry, nor any meaning in a foreign language. 

 

If said term has significance/meaning, applicant should provide an explanation.

 

 

Signed Declaration Required

 

The application was not signed and verified, which are application requirements.  15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34.  Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §2.20, the following statement:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date, and the facts set forth in the application are true and correct.”  37 C.F.R. §2.193(c)(1)(iii); TMEP §804.02.

 

If applicant responds to this Office action via TEAS, applicant may satisfy this requirement by adding the required statement (specified immediately above) to the TEAS response form, checking the box for a “signed declaration,” and properly signing the form by either (1) choosing an electronic signature consisting of any combination of letters, numbers, spaces and/or punctuation marks, preceded and followed by the forward slash (/) symbol (e.g., /johndoe/), and entering this in the signature block on the response form, or (2) attaching a JPG or PDF image of a declaration under 37 C.F.R. §2.20 (see declaration paragraph below) together with a pen-and-ink signature.  TMEP §804.05. 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following declaration at the end of the response, properly signed and dated:

 

The undersigned, being hereby warned that willful false statements and the like so made 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 any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use such mark in commerce; that applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date; that the facts set forth in the application are true and correct; that 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)

 

 

 

 

Application Pursuant to Sections 1(b) and 44(d)

 

The application specifies both intent to use under Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  15 U.S.C. §§1051(b) and 1126(d).  When an application is filed pursuant to Section 44(d), the USPTO presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S.  TMEP §§806.02(f) and 1003.03. 

 

However, applicant may rely solely on intent to use as the basis for registration, and still claim the benefit of the priority filing date.  If applicant wants to rely on intent to use as the sole basis for registration, with the claim of priority, applicant should submit an amendment so advising the undersigned.  Once all other outstanding issues are resolved, the mark would be approved for publication without requiring a copy of the foreign registration.  TMEP §§806.02(f) and 806.04(b).  However, while the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, the USPTO will presume that applicant is relying on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

 

Standard Character Claim in U.S. Application with Section 44 Basis – Advisory

 

The U.S. application, which is based on a foreign registration pursuant to 15 U.S.C. §1126(e), contains a standard character claim.  However, because the foreign registration has not yet been submitted, the record is unclear as to whether the foreign registration includes this claim.  The mark in the U.S. application must be a substantially exact representation of the mark in the foreign registration; thus, they must both include a standard character claim.  See 37 C.F.R. §2.52; TMEP §§807.03(f) and 1011.01. 

 

Upon receipt of the foreign registration certificate, if it does not indicate that the mark is in standard characters, applicant will be required to (1) submit the following statement in the U.S. application:  “Under the law of the country of origin, the foreign application or registration includes a standard character claim or the equivalent,” or (2) delete the standard character claim from the U.S. application. 

 

 

Response Guidelines

 

There is no required format or form for responding to this 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.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

The response should 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 simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

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, etc.).  TMEP §§712 et seq. 

 

 

Informational

 

Applicants may now file requests to change the correspondence address electronically on up to 20 applications at one time.  The Office encourages applicants to use this time-saving form, available online at http://www.gov.uspto.report/teas/index.html.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 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) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

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 applications and registrations.  Please note that an application serial number or registration number is needed to be able to access this database.  TARR is available 24 hours a day, 7 days a week.

 

 

/Matthew J. Pappas/

Law Office 107

HELP LINE:  571/272-9250

matthew.pappas@uspto.gov (informal)

571/272-9206 phone

571/273-9107 fax

 

 

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.