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  77/010517

 

The applicant’s response has been reviewed.  Please note the following.

 

Identifications in Application and Foreign Registration

 

The applicant’s goods are identified in the United States application as “magazine paper.”  However, the goods are identified in the foreign certificate as a “magazine,” and in the original application as a “revista mensual” (or, “monthly periodical”). If KENA is indeed the title of a magazine, the applicant is advised that it may not amend the identification of goods because the present identification – “magazine paper” – is unambiguous and acceptable.  An applicant may not amend an acceptable identification from one genus of goods (see attached definition of “magazine paper”) to another genus (e.g., periodicals).  The amended identification would be beyond the scope of the goods in the original identification, which is not permitted.  Therefore, please note the following refusal.

 

Registration is refused for the goods based on Section 44(e) of the Trademark Act because the goods identified in the U.S. application are completely different from, and thus broader in scope than, the goods in the foreign registration.  15 U.S.C. §1126(e); 37 C.F.R. §2.32(a)(6).  The identification in the U.S. application cannot be amended to conform to the identification in the foreign registration because such an amendment would impermissibly broaden the U.S. application’s goods.  37 C.F.R. §2.71(a).

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements.

 

[1]  The application indicates that the foreign registration was renewed on May 16, 2006 and that it expired on May 16, 2007.  If the foreign registration has expired, the applicant must delete the Section 44 basis from the application.

 

In addition, the applicant claims a priority filing date under Section 44(d).  However, in order to do so, the applicant must have filed a foreign application (not merely a renewal document) within six months prior to filing the United States application.  Since the mark was registered in Mexico in 1979, the applicant may not claim a priority filing date under Section 44(d).  Thus, even if the applicant is able to continue the Section 44(e) basis, applicant must delete reference to Section 44(d) in the application.

 

[2]  The applicant has added Section 1(a) – based on use in commerce – as a filing basis.  Please note the following:

 

The application is incomplete because it does not include the required specimen showing use of the applied-for mark in commerce for the goods identified in the application.  An application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each class of goods.  Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §904.

 

Therefore, applicant must submit the following:

 

(1)   A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; and

 

(2)    The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.56(a); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq. 

 

Pending a proper response, registration is refused because applicant has not provided evidence of use in commerce of the applied-for mark.  15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Further action awaits the applicant’s response.

 

 

 

/StevenFine/

Trademark Attorney

Law Office 110

(571) 272-9158

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.