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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  77/101513

 

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

 

Likelihood of Confusion – Section 2(d)

               Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 0580150.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

               A likelihood of confusion determination requires a two-part analysis.  First the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

             Here, applicant has applied to register the mark PARIS with an Eiffel Tower design for various kinds of clothing, in Class 25. 

                The registrant’s mark is PARIS FASHIONS for shoes, particularly for ladies' and misses' shoes made of leather or fabric or combinations of the same.

 

Comparison of the Marks

                The applicant’s mark is highly similar to the registrants’ marks and will lead to consumer confusion.  Specifically, the marks are similar in that they all contain the term PARIS. 

                Clearly both Applicant’s mark and registrant’s mark begin with the word PARIS, and “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”  Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). 

            Applicant’s mark also contains a design element in the form of the Eiffel Tower.  It has long been held that when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). Further, in U.S. Registration No. 0580150 the term FASHION has been disclaimed.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) (holding that DELTA is the dominant portion of the mark THE DELTA CAFÉ where the disclaimed word “café” is descriptive of applicant’s services); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Therefore, the Examining Attorney believes that the dominant portion of Applicant’s mark and the registrant’s mark is the term PARIS.

               Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii).  As noted above, all the marks contain the term PARIS.

                Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.

Comparison of the Goods and Services

                  The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

             Here, the applicant’s and registrant’s goods are highly related types of clothing items which will travel in the same trade channels.  The decisions in the clothing field have held many different types of apparel to be related under Section 2(d).  Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men). Moreover, neither the application nor the registration(s) contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).

               Accordingly, registration must be refused because the average purchaser would be likely to conclude that applicant’s goods and those cited in U.S. Registration No. 0580150 emanate from a common source.

RIGHT TO RESPOND 

                 Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

 

GEOGRAPHICALLY DECEPTIVE AND DECEPTIVELY MISDESCRIPTIVE

             Registration is refused because the proposed mark consists of or comprises geographically deceptive and primarily geographically deceptively misdescriptive matter in relation to the identified goods and/or services.  15 U.S.C. §§1052(a) and (e)(3); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003); See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989).

                In this case, applicant seeks registration of the mark PARIS and Eiffel Tower design in connection with various kinds of clothing.

              The primary significance of the term “PARIS” is geographic, i.e., as the name of “the capital and largest city of France, in the north-central part of the country on the Seine River” (see attached online dictionary excerpt).  The goods and/or services do not originate in this geographic location.  The public is likely to believe that applicant’s goods and/or services come from this place because Paris is regarded as a fashion capital.  Furthermore, this belief would materially influence consumers to purchase the goods and/or services because Parisian fashions are likely to be viewed as particularly favorable.  See In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984).

             A mark is geographically deceptive and primarily geographically deceptively misdescriptive if: 

(1)     the primary significance of the mark is a generally known geographic location;

(2)     the goods or services for which applicant seeks registration do not originate in the place identified in the mark;

(3)     purchasers would be likely to believe that the goods or services originate in the geographic place named in the mark; and

(4)     the misrepresentation is a material factor in the purchaser’s decision to buy the goods or use the services in question.

          In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003); TMEP §§1210.01(b) and (c).

             The record indicates that applicant is located in New York and incorporated in New York, which is not the geographic place named in applicant’s proposed mark.  Applicant must specifically state whether its goods are or will be manufactured, produced or sold in, or have any other connection with, the geographic place named in the mark.  37 C.F.R. §2.61(b); TMEP §1210.03.

                  Please note that although applicant’s proposed mark contains a design element, under Trademark Act Sections 2(a) and 2(e)(3), 15 U.S.C. §§1052(a) and (e)(3), the geographically deceptive and primarily geographically deceptively misdescriptive matter need not be the entire mark, or even the dominant portion of the mark.[1]  It is sufficient if some portion of the proposed mark is geographically deceptive and primarily geographically deceptively misdescriptive with respect to the goods and/or services in question.  See e.g., American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984); TMEP §1210.06(b).

               To support a finding of geographical deceptiveness and primarily geographically deceptively misdescriptiveness, there must a goods-place association that is material to the purchasing decision.  In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541-1542 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).  If the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.  In re California Innovations, Inc., supra; In re Save Venice New York Inc., 259 F.3d. 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984); TMEP §§1210.05(b) and (b)(i).

             One or more gazetteer or similar excerpts showing that applicant’s goods (or sufficiently related goods) are a principal product of that geographic area is sufficient evidence to show that a particular geographic location is renowned for specific goods.  House of Windsor, 221 USPQ at 57.  Toward this end, the examiner attaches several online articles describing PARIS as a world fashion capital and source of highly valued clothing and fashion accessories.  Given this status, clothing and accessory items designed, manufactured or otherwise originating in Paris are likely to be regarded as particularly fashionable or of high-quality – attributes which may reasonably affect a consumer’s decision to purchase a particular item.   

              Accordingly, in the absence of evidence or statement connecting the identified goods to Paris, registration is refused because the proposed mark consists of or comprises geographically deceptive and primarily geographically deceptively misdescriptive matter.

RIGHT TO RESPOND 

                 Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

OTHER

PRIOR PENDING APPLICATION – POTENTIAL REFUSAL OF REGISTRATION

 

         The examining attorney encloses information regarding pending Application Serial No. 78835738.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

 

 

RIGHT TO RESPOND

 

            If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

INFORMALITIES

 

               If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

INFORMATION REQUIREMENT

 

                Applicant must indicate specifically whether the goods are manufactured or produced, or have any other connection with, the geographic location named in the mark, namely Paris.  37 C.F.R. §2.61(b); TMEP §1210.03.  If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote, and applicant’s goods are manufactured or produced in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the goods originate.  See In re Nantucket Allserve, Inc., 28 USPQ2d 1144 (TTAB 1993).

 

IDENTIFICATION OF GOODS

 

                The wording “CLOTHING, HATS, CAPS, FOOTWEAR, UNDERWEAR, TOWELS, SHIRTS, ROBES, NECKTIES, BELTS, HEADBANDS, WRISTBANDS, SHORTS, VEST, PANTS, JEANS, DRESSES, JACKETS, COATS, GLOVES” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of the applicant’s goods.  Applicant may substitute the following wording, if accurate: 

 

                Class 24 – towels

 

                Class 25 - CLOTHING, NAMELY,  HATS, CAPS, FOOTWEAR, UNDERWEAR, SHIRTS, ROBES, NECKTIES, BELTS, HEADBANDS, WRISTBANDS, SHORTS, VEST, PANTS, JEANS, DRESSES, JACKETS, COATS AND GLOVES

 

               In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

               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.

 

MULTI-CLASS APPLICATION REQUIREMENTS

 

             If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   (1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   (2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   (3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    (a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   (b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    (c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   (d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

             Please note that the specimen(s) of record are acceptable for class(es) 24 only.

 

SPECIMEN NOT ACCEPTABLE FOR CLASS 25 GOODS

 

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

 

                 The specimen is not acceptable as evidence of actual trademark use because it does not show use of the mark with Class 25 clothing goods, rather it shows use of the mark with Class 24 goods.  Thus it fails to show proper use on the goods or on packaging of the goods.

 

               Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark in use in commerce for the goods specified in the application.

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(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.

 

Viable Option – Change Basis

 

                  If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

              In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.03(c).

 

Conditional Refusal

 

              Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

DISCLAIMER

 

             Applicant must disclaim the descriptive wording “PARIS” apart from the mark as shown because it is geographically descriptive.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

               A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

              The following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

 

             The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “PARIS” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983). 

 

RIGHT TO SEEK COUNSEL

 

              Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

GUIDELINES FOR PRO SE APPLICANT

 

             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.

 

              To ensure that its response is considered timely, applicant may wish to add the following completed “certificate of mailing” to the end of its response.  Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced.  See TMEP §§305.02 et seq.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA, 22313-1451, on the date below.

 

________________________________________________

(Typed or Printed Name of Person Signing Certificate)

________________________________________________

(Signature)

________________________________________________

(Date)

            The certificate of mailing procedure does not apply to the initial filing of trademark applications.  37 C.F.R. §2.197(a)(2).

 

              Alternatively, to ensure that the response is considered timely, applicant may wish to add the following completed “certificate of transmission” to the end of its response.  Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced.  See TMEP §§306.05 et seq.

 

CERTIFICATE OF TRANSMISSION

 

I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date shown below.

________________________________________________

(Typed or Printed Name of Person Signing Certificate)

________________________________________________

(Signature)

________________________________________________

(Date)

The certificate of transmission procedure does not apply to the initial filing of trademark applications.  37 C.F.R. §2.197(a)(2).

 

CLOSING

 

               If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/William H. Dawe, III/

Trademark Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

 

 

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 2 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 11 attachments  

1. p1-1  

2. p1-2  

3. 71544955P001OF003  

4. 71544955P002OF003  

5. 71544955P003OF003  

6. 78835738P001OF002  

7. 78835738P002OF002  

8. pfc1-1  

9. pfc1-2  

10. pfc1-3  

11. pfc2-1  

 

Email 2 includes the following 6 attachments  

1. pfc2-2  

2. pfc2-3  

3. pfc2-4  

4. pfc2-5  

5. pfc3-1  

6. pfc3-2  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.