Offc Action Outgoing

This letter responds to applicant’s communication filed on August 27, 2007. The examining attorney has reviewed the response and accepts and acknowledges the recitation and classification of services in part and withdraws the potential citation of Application Serial Nos. 78/961,991 & 78/962,081, however, the applicant must still address the following issues.

I. OWNERSHIP REFUSAL – New Issue:

Registration is refused because applicant is not the owner of the mark. See 15 U.S.C. §1126(e); TMEP §1005. Under Trademark Act Section 44(e), an applicant must be the owner of the foreign application or registration on the filing date of the U.S. application. TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991). In this case, the foreign registration specifies an owner as Elektra S.A de C.V, while the U.S. applicant is Elektra Trading & Consulting Group, S.A. d.e. C.V. The applicant must explain this inconsistency.

If applicant is the owner of the foreign application or registration and can prove ownership by an assignment that was completed before filing in the United States, the Section 44(e) basis can remain in the application. TMEP §1005. Applicant must submit a certified copy or certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or evidence that the foreign registration was assigned to applicant before the filing date in the United States. See id. §§1005, 1006.

If applicant did not own the foreign registration on or before the filing date, applicant must delete the Section 44(e) basis. Then, this application will proceed solely under Section 1(b). TMEP §806.01(a)-(b).

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality and note the advisory.

II. RECITATION/CALSSIFICATION OF SERVICES - Indefinite in Part (New Issue):

The duplicative listing of the recitation of services in Classes 35 & 42 is unnecessary. The services, as amended, are acceptable in Class 35. As such, applicant must delete the duplicative listing of same in Class 42.

Applicant is concerned whether the reclassification from Class 42 to Class 35 will impact its ability to maintain its reliance under Section 44. It will not. The decision as to the proper classification of goods or services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office (i.e., the Office can unilaterally correct such misclassifications, as appropriate). In re Tee-Pak inc., 164 USPQ 88 (TTAB 1969). The sole concern in reviewing the goods/services being supported under a Section 44 filing is as to the ‘scope’ of such goods/services and not as to classification. Therefore, with the exception of filing under a Section 66 basis, the same goods/services are routinely classified in differing classes internationally. If the applicant would like to discuss the matter further, please contact the undersigned-examining attorney.

III. ADVISORY CONTINUED – Prior Pending Mark:

As note previously, although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney maintains the potential citation of pending Application Serial No. 78/912,800. 37 C.F.R. §2.83.

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

As such, this advisory is hereby maintained and CONTINUED.

IV. CONCLUSION:

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

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.