| To: | Whittard of Chelsea Limited (dan.hampton@hklaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 77114350 - WHITTARD OF CHELSEA - 110664-00001 |
| Sent: | 6/12/2007 10:27:42 AM |
| Sent As: | ECOM110@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 77/114350
APPLICANT: Whittard of Chelsea Limited
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: WHITTARD OF CHELSEA
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 110664-00001
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
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 77/114350
The assigned examining attorney has reviewed the referenced application and determined the following.
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. Section 1052(d). TMEP section 1105.01.
The applicant must disclaim the descriptive term "CHELSEA" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). This term merely describes the geographic location of the services. As evidenced by the attached entries in the Columbia Gazetteer, Chelsea is a London neighborhood, and the applicant is located in London. See attachments.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), permits the Office to require a disclaimer of 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).
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use CHELSEA apart from the mark as shown.
Every disclaimer will be printed on the registration certificate in this standardized format. TMEP §1213.08(a)(i).
If applicant is the owner of U.S. Registration Nos. 2671068 and 2836373, 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 No. 2671068 and 2836373.
The identification of Class 35 services is acceptable as written; however, the identification of Class 30 goods is unacceptable as indefinite. TMEP §1402.01. Note that the parentheses and wording “not included in other classes” must be removed. The applicant may adopt the following identifications, if accurate:
Containers for household use; Kitchen utensils, namely, {must indicate the common commercial name(s) of the utensils; e.g., “strainers and sieves”}; Beverage glassware;
Crockery not being of precious metals, namely, {must indicate the common commercial name(s) of the utensils; e.g., “flower pots and tea pots”}; in International Class 21.
The wording “porcelain; ceramics; earthenware” must be further clarified by indicating the actual goods that are composed of “porcelain; ceramics; earthenware.”
Tableware not being of precious metals, namely, knives, forks and spoons, in International Class 8.
Tea, cocoa, coffee, coffee substitutes, instant tea, tea-based beverages, cocoa-based beverages, coffee-based beverages; Chocolate; Products containing chocolate, namely, {must indicate the common commercial name(s) of the goods}; chocolate and confectionery sprinkles and toppings for hot beverages, in International Class 30.
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.
The applicant may wish to consult the revised on-line identification manual on the PTO homepage for acceptable common names of goods and services at the following address:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.
The application identifies goods and/or services that are classified in at least four(4) classes; however, the fees submitted are sufficient for only three(3) classes. 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.
Copy of Foreign Registration Required
The application does not include a copy of the foreign registration. An application filed under Section 44(e) of the Trademark Act must include a true copy, photocopy, certification or certified copy of a foreign registration, or a registered extension of protection of an international registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004 et seq.
Applicant’s country of origin must 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. If applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, applicant must submit a copy of the foreign registration in order to satisfy the requirement of Section 44(e). If the foreign certificate of registration is not written in English, applicant must also provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. Please note that an application serial number or registration number is needed to be able to access this database. TARR is available 24 hours a day, 7 days a week.
/Laura Gorman Kovalsky/
Trademark Attorney, Law Office 110
571/272-9182
571/273-9110 - fax
(for informal inquiries only)
“TMEP” refers to the Trademark Manual of Examining Procedure (4th ed., April 2005), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm. This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.
In order to change the correspondence address for an application, an applicant or the attorney of record must submit a written request. TMEP §603.02(a). Applicants may file requests to change the correspondence address electronically at http://www.gov.uspto.report/teas/index.html. The transmittal of a response to an Office action bearing a new address for an applicant or an applicant’s attorney is not sufficient to effect a change in the correspondence address.
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:
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.
