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  77/111642

 

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

 

Search Results.

 

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

 

Nevertheless, the applicant must respond to the following informalities.

 

Drawing Contains the Color without a Color Location Description Statement.

The drawing contains color with a proper color claim but without any description as to the location of the colors. 

Color drawings must be accompanied by the following:  (1) a color claim naming the colors that are a feature of the mark; and (2) a separate statement describing where the color(s) appear on the mark.  A color drawing will not publish without both of these statements. 

A properly worded description would read as follows:

The colors BLACK appears in the border design and in the lettering E, D, I, T, and N; the color red appears in the number 10; the color silver appears in the oval design. 

The applicant may supplement the required written description of the color contained in a mark with a reference to a commercial color identification system.  The Office does not endorse or recommend any one commercial color identification system.  The written description of the mark must include a generic description of the color, in addition to the reference to the commercial color identification system.

Disclaimer of Descriptive Wording.

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

The term EDITION is defined in pertinent part as follows:

 

e·di·tion

 
e·di·tion (î-dîsh¹en) noun

Abbr. ed., edit.

***

4.    ***. b. Any of the various or successive forms in which something is offered or presented: this year's edition of fall fashions from Paris.

***

 [Middle English edicion, version, translation, from Latin êditio, êdition-, publication, production, from êditus, past participle of êdere, to publish, produce : ê-, ex-, ex- + dare, to give.][1]

The wording EDITION in the applicant’s mark is merely descriptive of the applicant’s goods because it describes the fact that they are the current version of a succession of automobiles or toy versions of the automobile. 

 

Historically, when the term EDITION is in an automobile or toy trademark application, Office practice finds the term EDITION merely descriptive of the goods and requires that the term be disclaimed.  See the attached registrations. 

 

See also the applicant’s companion application for the mark EDITION 10 for automobiles, Application Serial No. 78884416, with the term EDITION disclaimed.

 

Likewise, the applicant must insert a disclaimer of EDITION in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1208.

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 computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use EDITION apart from the mark as shown.

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

Application Pursuant to Sections 1(b) and 44(d).

The applicant filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  When an application is filed pursuant to Section 44(d), this Office presumes, unless otherwise indicated, that the applicant intends to rely upon the resulting foreign registration as a basis for registration in the Trademark Manual of Examining Procedure Section 1003 and 806.02 - 806.02(f).  Under such circumstances, the application may not be approved for publication until a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin and, if appropriate, an English translation have been filed.  It is customary for the translator to sign the translation.  Also note that Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

This application is otherwise in condition for publication once the above amendments are presented in applicant's response and entered by the Office.  Therefore, action on this application will be SUSPENDED pending receipt of the foreign registration and, if appropriate, an English translation, once the applicant amends its application.

In the alternative, once the above amendments are presented in applicant's response and entered by the Office, if the applicant wishes to proceed and rely on its intent to use the mark in commerce as the sole basis for registration at this time, the applicant must specifically instruct the examining attorney to approve the case for publication based solely on the Section 1(b) basis.  If the applicant does so, the applicant retains its priority claim under Section 44(d), but the applicant may not subsequently rely on the foreign registration as an additional basis for registration. Trademark Manual of Examining Procedure Section 806.02 - 806.02(f).  Of course, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

Responding to this Office Action.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney. However, you may be able to can receive a response faster by sending me an email at john.dalier@uspto.gov with any questions regarding this Office Action.  Note that this email address is not for responses to Office Actions, just questions about Office Actions.

 

Copies of Documents

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: <http://portal.gov.uspto.report/external/portal/tow>.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

 

/John D. Dalier/

Trademark Examining Attorney

Law Office 106; 571 272 9150

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.