Offc Action Outgoing

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.

Drawing

The drawing shows the mark in black and/or white and gray. However, the application does not specify whether color is a feature of the mark or the mark is intended to be represented only in black and white. There are only two options for presenting the mark: (1) color drawings, and (2) black and white drawings. The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required. 37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e).

(1) If the proposed mark is not in color, applicant must submit the following statement: “The mark is not in color.”

(2) If color is a feature of the proposed mark, applicant must submit both a statement listing all the colors claimed as a feature of the mark and a statement describing where the colors appear in the mark. The color claim and color location statement must include all the colors in the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. If any of these colors are not being used as color in the mark, the color location statement must describe where the black, white and gray appear in the mark and state that it constitutes background, outlining, shading or transparent areas and is not part of the mark. The following format is suggested: “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark. The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”

Option to Delete Basis

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Jacqueline A. Lavine/

Law Office 101

(571) 272-9185

(571) 273-9101 FAX

jacky.lavine@uspto.gov (INFORMAL ONLY)

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.