| To: | Wharton Innovative Products LLC (info@kjiplaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 77112698 - ON THE JOB - 2981-3-004 |
| Sent: | 6/14/2007 11:10:46 AM |
| Sent As: | ECOM106@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/112698
MARK: ON THE JOB
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Wharton Innovative Products LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 6/14/2007
The assigned examining attorney has reviewed the referenced application and determined the following.
After searching the Office database, the examining attorney found no similar pending or registered marks which would bar registration under the Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP 1105.01.
In a preliminary amendment, the applicant requested that the original drawing featuring color be amended to a black and white drawing. After reviewing the amendment the examining attorney has determined that the proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark. 37 C.F.R. §2.72; TMEP §§807.14 et seq. See In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration).
In the present case, the amendment of the drawing from a color mark to a black and white drawing represents a material alteration of the mark. The original application contains both a color drawing and a color claim featuring the colors shown in the drawing. Amending the mark from color to black and white represents a material alteration because it changes the commercial impression by changing a dominant portion of the mark.
Given the reasons detailed above, the proposed amendment of the mark is unacceptable. For that reason, the color drawing will be re-entered in the database.
Due to the unacceptability of the amended drawing, the applicant must provide a statement describing the location of the color in the mark. Applicant has submitted a color drawing and color claim, but has not submitted the required color location statement. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(ii).
Therefore, applicant must provide a description of where the colors appear in the mark using the following format: “The colors red, white and blue appear in the wording “On The Job” and in the design of a hard hat worker and wrench.”
The wording “antiseptic skin protective hand lotion, antiseptic skin protective foot lotion, sun screen stick for the face, pain relief spray, sun burn relief hydrogel sheets, anti-chafing spray lotion for the groin area” in the identification of goods is unacceptable as indefinite because the “sun screen stick for the face” has been misclassified. In addition, the applicant must provide additional description of the anti-chafing spray and sun burn relief sheets in order to accurately classify the goods. The applicant may amend this wording to “sun screen stick for the face,” in International Class 3 and/or “non-medicated skin care preparations namely anti-chafing spray lotion for the groin area; non-medicated preparations for the treatment of sun burn namely, sun burn relief hydrogel sheets,” in International Class 3 and “antiseptic skin protective hand lotion, antiseptic skin protective foot lotion, pain relief spray, medicated sun burn relief hydrogel sheets, medicated anti-chafing spray lotion for the groin area,” in International Class 5, if accurate. TMEP §1402.01.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
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.
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Pamela Y. Willis/
Trademark Attorney
U.S. Patent & Trademark Office
Law Office 106
Tel.: 571.272.9335
Fax: 571.273.9106
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
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.