UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NOTICE OF SUSPENSION

 

ISSUE/MAILING DATE: 11/23/2007

 

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason specified below.  No response is needed.  37.C.F.R.§2.67. The Office will conduct periodic status checks to determine if suspension remains appropriate.

 

In the first Office action dated May 1, 2007, registration was refused under Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 2308982.  The applicant was also made aware of a potentially conflicting mark in Application Serial No. 78821824.  Additionally, a requirement was made for an acceptable identification of goods.  This is in response to applicant’s communication filed on November 11, 2007.

 

In its response, applicant amended its identification of goods, effectively obviating possible confusion with the cited registration.  Therefore, the Section 2(d) refusal is now withdrawn.  However, the cited prior pending application continues to present a potential conflict and, therefore, the application is suspended as discussed below.  Additionally, the amended identification of goods remains unacceptable for the reason below and, therefore, this requirement is maintained and continued. 

 

Suspension Pending Disposition of Prior Pending Application

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No. 78821824

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application, the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application was previously attached.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

Identification and Classification of Goods – Requirement Maintained and Continued

 

Applicant has clarified its identification of goods by listing the goods with more specificity.  The goods “non-metal photo boxes” and “cardboard boxes for crafts” have been moved to applicant’s companion application, Serial No. 77101016, as requested in the response.  TMEP §1402.08.   However, the goods “waste baskets” and “paper trays” are properly classified in International class 21.  Applicant must either delete these goods or add International Class 21 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The remainder of the identification of goods is acceptable as written in International class 20:

 

“Filing and organizational systems and aids, namely, furniture, office furniture, shelves, shelving, filing cabinets, storage cabinets, non-metal bins, non-metal banker's boxes, non-metal money boxes, plastic craft boxes, plastic boxes for under the bed, CD/DVD storage cabinets, picture frames, key cabinets, plastic key tags, plastic key rings and storage and organization systems comprising shelves, drawers, cupboards, baskets and clothes rods, sold as a unit.”

 

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.

 

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.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

The applicant has paid for one (1) International class.

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney.

 

 

 

/Christine Cooper/

Trademark Attorney

Law Office 113

U.S. Patent & Trademark Office

(571) 272-9844

(571) 273-9844 fax

 

 

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.

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 11/23/2007 FOR

APPLICATION SERIAL NO. 77101020

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77101020&doc_type=SUL&mail_date=20071123 (or copy and paste this URL into the address field of your browser), or visit http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 11/23/2007.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.