| To: | Doucet, Janet Cho (janet@milkdot.com) |
| Subject: | TRADEMARK APPLICATION NO. 77313667 - MILKDOT - N/A |
| Sent: | 2/12/2008 9:44:15 AM |
| Sent As: | ECOM110@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/313667
MARK: MILKDOT
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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: Doucet, Janet Cho
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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: 2/12/2008
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
This application may not proceed to publication, however, until the applicant responds to the following.
The identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes. TMEP §§1402.01 and 1402.03. The applicant must identify each and every product with specificity, and avoid unduly broad and vague terms.
The wording “like” and “and similar” in the identification of goods is indefinite and must be (1) clarified to specify the common commercial or generic name for the goods, or (2) deleted. TMEP §§1402.01 and 1402.03(a). This wording constitutes an open-ended “catch-all” word or phrase and is not acceptable because it fails to identify specific goods.
In the identification, applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. Id.
Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
Suggested Identification(s) Of Goods
Applicant may substitute the following wording, if accurate:
Baby and children's products, namely, [identify each and every product by its common commercial terms, e.g., baby backpacks and diaper bags] in International Class 18; and/or
Baby and children's products, namely, [identify each and every product by its common commercial terms, e.g., fitted fabric covers for high chairs] in International Class 20
Baby and children's products, namely, [identify each and every product by its common commercial terms, e.g., thermal insulated fabric lunch bag] in International Class 21; and/or
Baby and children's products, namely, [identify each and every product by its common commercial terms, e.g., cloth bags for stacking and storing diapers and blankets] in International Class 22.
Insufficient Fee
The application identifies goods and/or services that are classified in at least two classes; however, the fees submitted are sufficient for only one class(es). 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.
If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
The name of an individual person appears in the section of the application intended for the trademark owner’s name, but the entity type is set forth as a corporation. Applicant must clarify this inconsistency. TMEP §803.03.
If applicant is an individual and the owner of the mark, applicant may simply request that the entity be amended to “individual” and indicate his/her country of citizenship for the record. 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.02(a) and 1201.02(c). Alternatively, if applicant is in fact a corporation, the correct name of the corporation (and U.S. state or foreign country of incorporation or organization) should be set forth. TMEP §§803.02(c) and 803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused under Trademark Act Section 1, 15 U.S.C. §1051, because the application was void as filed. Only the owner of a mark may apply to register the mark. TMEP §§803.01, 803.06, and 1201.02(b).
Applicant has submitted a color drawing, but the color claim and color location statement is not clear and concise. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark (including black, white and gray) 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).
Applicant must submit both a color claim and color location statement using the following format:
(1) Color claim: “The colors white and brown are claimed as a feature of the mark”; and
(2) Color location statement: “The mark consists of the wording “milkdot” in white inside of a brown raindrop design which is outlined in white.”
Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.
There is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq.
To ensure that its response is considered timely, applicant may wish to add the following completed “certificate of mailing” to the end of its response, if the applicant responds on paper via regular mail. Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced. See TMEP §§305.02 et seq.
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA, 22313-1451, on the date below.
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(Typed or Printed Name of Person Signing Certificate)
________________________________________________
(Signature)
________________________________________________
(Date)
The certificate of mailing procedure does not apply to the initial filing of trademark applications. 37 C.F.R. §2.197(a)(2).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Andrea Koyner Nadelman/
Andrea Koyner Nadelman
Trademark Attorney
Law Office 110
(571) 272-9370
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.