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  77/043346

 

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

 

Search of Office Records/ Pending Application(s)

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that potentially conflicting marks in prior-filed pending applications may present a bar to registration.

 

Likelihood of Confusion

 

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. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/929142 and 78/934739.  37 C.F.R. Section 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).

 

 

International Registration

 

 

The application indicates that applicant is domiciled in England, but the foreign application on which applicant relies for priority was filed in European Union.  To obtain registration under Section 44(e) based on the foreign registration that will issue from the foreign application on which applicant relies for priority, applicant must establish that the country in which the foreign application was filed is its country of origin, i.e., that applicant has a bona fide and effective industrial or commercial establishment in that country.  15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04.

 

Thus, if applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, applicant must provide evidence that England is a country of origin. 

 

If applicant cannot establish that the country in which the foreign application was filed is a country of origin, registration under Section 44(e) will be refused.  Applicant may amend the application to delete the Section 44(e) basis and rely on Sections 1(a) or 1(b) as a filing basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  If the U.S. application satisfies the requirements of  Section 44(d) as of the filing date of the U.S. application, applicant may retain the priority filing date without perfecting the  Section 44(e) basis, as long as there is otherwise a valid basis for registration under Section 1.  37 C.F.R. §§2.35(b); TMEP §806.04(b).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under Section 44(d) must also establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03.

 

 

 

 

 

 

Domestic Representative

 

Applicant may designate a domestic representative upon whom notices or process may be served.  If applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the Director of the United States Patent and Trademark Office.  Trademark Act Sections 1(e) and 68(d), 15 U.S.C. §§1051(e) and 1141h(d); 37 C.F.R. §2.24; TMEP §604. 

 

Applicant is encouraged to file a designation of domestic representative online via the USPTO website at http://www.gov.uspto.report/teas/index.html.   In addition, the following format may be used to file a Designation of Domestic Representative on paper for submission via regular mail.

 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE

 

 

 

________________________            _________________________

Identify the mark            Serial No.

 

 

 

________________________            _________________________

Name of applicant            Date of signature

 

 

 

__________________________________________________________________

(Name of domestic representative)

 

 

whose postal address is ________________________________________________

________________________________________________

is hereby designated applicant’s representative upon whom notices or process in proceedings affecting the mark may be served.

 

 

 

____________________________

(Signature of applicant)

 

 

Applicant's Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  The applicant may also visit the Patent and Trademark Office’s home page at www.uspto.gov.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or electronic mail.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9106.

 

 

 

 

 

 

 

/pbm/

Paula B. Mays

Trademark Examining Attorney

Law Office 106

Telephone: (571) 272 9258

Fax:  (571) 273-9106

 

 

 

 

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