UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 11/16/2007

 

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

 

No Conflicting Marks Noted

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.

 

Identification and Classification of Class 16 Goods

The identification of Class 14 goods is acceptable; however, the identification of Class 16 goods is unacceptable as indefinite.  TMEP §1402.01.  Specifically, the term “or” is considered indefinite.  In addition, “plastic signboards” are properly classified in International Class 20.  The applicant may adopt the following identification, if accurate: 

 

Pamphlets, brochures, catalogs in the field of jewelry; Paperboards; Non-textile paper labels; Paper and plastic packaging bags; Advertisement poster boards of paper and cardboard, in International Class 16.

 

            Plastic signboards, in International Class 20.

 

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 potentially two(2) classes; however, the fees submitted are sufficient for only one(1) class.  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.

 

INQUIRY – Goods in Trade

Registration of trademarks will be granted only for actual “goods in trade.”  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The applicant’s Class 16/20 goods may not have the utilitarian purpose or function of the particular products if they are not actually sold or distributed separate and apart from the applicant’s other goods and services.  See generally In re Shareholders Data Corp., 495 F.2d 1360,181 USPQ 722 (CCPA 1974) (mark unregistrable for reports where reports not “goods in trade” but simply conduit through which user renders services; mark must be applied to “vendible commodity”); cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (ball point pens used to promote applicant’s tools, but which possess utilitarian function and purpose, and have been sold to applicant’s franchised dealers and transported in commerce under mark, constitute goods in trade); In re United Merchants & Mftrs., Inc., 154 USPQ 625 (TTAB 1967) (calendar used as advertising device to promote applicant’s plastic film, but having, in and of itself, a utilitarian function and purpose, and regularly distributed in commerce for several years, constitutes goods in trade).

 

The applicant should indicate in its response whether or not the goods identified in the application will be actual goods in trade.

 

Electronic Signature Omitted

The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  This electronically transmitted application does not comply with the signature rules set forth in 37 C.F.R. §2.33, reproduced in relevant part below.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §§ 2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii).

 

Where an electronically transmitted filing is permitted, the person who signs the verified statement must either:

 

(1)        Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission (emphasis added); and print, sign and date in permanent ink, and maintain a paper copy of the electronic submission; or

 

(2)        Sign the verified statement using some other form of electronic signature specified by the Commissioner.  37 C.F.R. §§ 2.33(d) et seq.

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a)[1].

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

                (Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

                    (Date)

 

 

/Laura Gorman Kovalsky/

Trademark Attorney, Law Office 110

571/272-9182

571/273-9110 - fax

laura.kovalsky@uspto.gov

  (for informal inquiries only)

 

“TMEP” refers to the Trademark Manual of Examining Procedure (4^th 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.

 

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 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.