UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FIRST 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  77/106287

 

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

 

No Conflicting Marks Noted

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

This application may not proceed to publication, however, until the applicant responds to the following. 

 

Prior Registrations

If applicant is the owner of U.S. Registration Nos. 3024286,  3024287 and 3038490, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 3024286,  3024287 and 3038490.

 

Unacceptable Identification Of Goods – International Class 18[1]

The identification of goods is indefinite and must be clarified.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  The wording “bags” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03. 

 

 

Unacceptable Identification Of Goods – International Class 20

The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.   As of January 1, 2007, jewelry boxes, regardless of composition, are classified in International Class 14.  Additionally, badges could include a variety of goods in several classes.  The applicant must clearly and specifically identify each and every product, and classify them properly.

 

 

Unacceptable Identification Of Goods – International Class 21

The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.   Each and every product must be concisely and accurately identified and properly classified.  For example, figurines could include a wide variety of products in several international classes.  Wind chimes, however, are simply misclassified, and are properly classified in International Class 20.

 

Unacceptable Identification Of Goods – International Class 24

The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.   Each and every product must be concisely and accurately identified and properly classified.  For example, textiles could include a wide variety of products in several international classes.

 

Unacceptable Identification Of Goods – International Class 30

The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.   Each and every product must be concisely and accurately identified and properly classified.  For example, “confectionery” could include a wide variety of products in several international classes.

 

 

Suggested Identifications Of Goods

Applicant may adopt the following identifications, if accurate: 

 

 

Medicated confectionery in International Class 5; and/or

 

Metal name badges, figurines of common metal in International Class 6; and/or

Knife bags in International Class 8; and/or

 

Graduated glassware and laboratory glassware in International Class 9; and/or

 

Ice bags for medical purposes in International Class 10; and/or

 

Pannier bags for motorcycles in International Class 12; and/or

Ammunition bags in International Class 13; and/or

 

Jewelry, watches and clocks; jewelry boxes not made of precious metals; badges of precious metal; figurines of precious metal in International Class 14; and/or

 

Fabric gift bags and grocery bags; paper badges; coasters made of paper, textile wine gift bags,  in International Class 16; and/or

 

Articles made from leather and imitations of leather, namely, [identify each and every item by its common commercial name, e.g., leather briefcases, leather cases for keys and leather cases]; gym bags; tote bags; purses; handbags; wallets; umbrellas; diaper bags, textile shopping bags  in International Class 18; and/or

 

Clay figurines in International Class 19; and/or

 

Picture frames; sleeping bags; mirrors; badges, namely, [clarify nature of goods, e.g., plastic name badges and police badges]; pillows; furniture; cold cast resin figurines; wine chimes in International Class 20; and/or

 

Housewares in the nature of [clarify goods, e.g., colanders for household use and graters for household purposes]; containers for household use;  dinnerware; beverage glassware; beverageware; leather and plastic coasters; removable insulators for drink cans and bottles in the nature of insulating sleeve holders for beverage cans and bottles; lunch kits consisting of lunch boxes and insulated containers for food or beverage; trays; hair brushes and hair combs; toothbrushes; ceramic, china, crystal, earthenware, glass, porcelain, and terra cotta figurines; plastic cups; cookie jars; paper cups; paper plates; wastepaper baskets, in International Class 21; and/or

 

Packaging bags of textile material in International Class 22; and/or

 

Textiles, namely, [identify each and every product by its common commercial name, e.g., felt and non-woven textile fabrics]; fabric, namely, [identify each and every product by its common commercial name, e.g., cotton fabric and chenille fabric]; bed linen; table linen; bath linen; textile articles identify each and every product by its common commercial name, e.g., hand towels of textile and gift wrap of textile];   cloth coasters in International Class 24; and/or

 

Ornamental novelty badges in International Class 26; and/or

 

Confectionery, namely, [identify each and every product by its common commercial name, e.g., pastilles and crystal sugar pieces] and chewing gum; breakfast cereals and preparations made from cereals, namely, [indicate specific items]; ready to eat cereal derived food bars; bread; muffins; muffin bars; pastry; waffles; pancakes; cookies; crackers; biscuits; popcorn; corn chips; pretzels; puddings; coffee; tea in International Class 30; and/or

 

 

Additions To Identification Not Permitted

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services 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.

 

 

NOTICE OF IMPLEMENTATION OF THE NEW EDITION OF THE NICE AGREEMENT - CHANGES TO CLASSIFICATION APPLY TO APPLICATIONS FILED ON OR AFTER JANUARY 2, 2007:  Effective January 1, 2007, the Ninth Edition of the Nice Agreement brought about significant changes to the classification of certain goods and services.  All applications filed on or after January 2, 2007, must comply with the classification specified in the Ninth Edition.  For applications filed before January 2, 2007, compliance with the Ninth Edition is optional; and any such applicants who opt to follow the Ninth Edition must advise the assigned trademark examining attorney.  The USPTO’s online Acceptable Identifications of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, has been updated to reflect the classification changes in the ninth edition.

 

 

Insufficient Fee

The application identifies goods and/or services that are classified in at least seven classes; however, the fees submitted are sufficient for only six class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810-810.01 and 1403.01.

 

Therefore, applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

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.

 

Requirements For  Multi-Class Application – Intent To Use

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

 

(1)   Applicant must list the goods and/or services 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 and/or services 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.

 

 

 

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.

 

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(571) 272-9370

 

 

 

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.