UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINER’S AMENDMENT/PRIORITY 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: 3/17/2009

EXAMINER'S AMENDMENT

 

OFFICE SEARCH:  The trademark examining attorney is amending the application as follows.  No prior approval or authorization from applicant or applicant’s attorney is required.  TMEP §707.02.

 

During routine administrative review of the application prior to publication for opposition, the goods “plastic foam door hangers used for arts and crafts” and “plastic foam beads used for arts and crafts,” which were incorrectly classified by the Office in International Class 17, were determined to be properly classified in International Classes 20 and 26, respectively, because they are considered “finished” products.  Therefore, the trademark examining attorney is amending the application to reclassify “plastic foam door hangers used for arts and crafts” in Class 20 and “plastic foam beads used for arts and crafts” in Class 26. 

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

 

Please note that any future amendments to the identification of goods must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e). 

 

 

PRIORITY ACTION

 

The following issue was discussed with applicant’s attorney Angelo J. Bufalino on March 9 and 10, 2009.  The issue was not previously raised by the examining attorney, but was raised during routine administrative review of the application prior to publication for opposition.  The examining attorney regrets any inconvenience to the applicant as a result of the issue not being previously raised.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS “JINGLE BELLS”

 

The identification of goods “jingle bells,” which applicant classified in International Class 28, is indefinite and must be clarified because it could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

To remain in Class 28, applicant must specify that the jingle bells are Christmas tree ornaments.  Otherwise, bells that are not musical instruments are classified based upon their material composition, i.e., metal bells are in Class 6, while non-metal bells for use in arts in crafts are in Class 26.

 

Therefore, applicant must either delete the goods “jingle bells” or clarify the identification and move the goods into the appropriate International Class, if necessary.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).  Applicant may adopt one or more of the following amended identifications, if accurate:

 

Class 6:            Metal jingle bells

 

Class 26:          Arts and crafts findings, namely, non-metal bells 

 

Class 28:          Christmas tree ornaments, namely, jingle bells

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

MULTIPLE-CLASS ADVISORY

 

If applicant chooses to add one or more additional International Classes to this application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(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); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

a.   Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

b.   One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

c.   A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

d.   Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

In this case, applicant has acceptable specimens of record for Classes 9, 14, 16, 17, 20, 21, 22, 24, 25, 26, and 28.  Should applicant add Class 6 to the application, the original specimen of record for Class 28 would also be acceptable for Class 6.  However, applicant would need to state that the dates of use are the same as specified in the initial application, per (3)b. and (3)d. above.

 

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant should fail to respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application: “jingle bells.”

 

The application will then proceed with the following goods only:

 

Class 9:            Magnets   

 

Class 14:          Charms, gemstones

 

Class 16:          Household glue for decorative purposes, modeling clay, markers, crayons, scrapbooks, glitter glue used for arts and crafts, scrapbook albums, sticker albums, photograph albums, paper placemats, foam stickers, Halloween goodie bags of paper and plastic; paper Halloween decorations

 

Class 17:          Plastic foam shapes used for arts and crafts, plastic foam sheets used for arts and crafts

 

Class 20:          Decorative glitter, picture frames, plastic Halloween decorations, holiday ornaments of plastic, plastic foam door hangers used for arts and crafts

 

Class 21:          Wooden craft sticks

 

Class 22:          Plastic string for connecting beads

 

Class 24:          Polyester fabric with a fur-like texture

 

Class 25:          Hats, visors

 

Class 26:          Plastic eyes used for arts and crafts, pom-poms used for arts and crafts, chenille passementerie, feathers used for arts and crafts, plastic foam beads used for arts and crafts

 

Class 28:          Arts and crafts kits for making toys, hobby craft kits for making decorative items, Christmas tree ornaments

 

37 C.F.R. §2.65(a).

 

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

 

 

/Kristin E. Carlson/

Trademark Examining Attorney

U.S Patent and Trademark Office

Law Office 105

Office: 571-272-2240

Fax: 571-273-9105

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 3/17/2009 FOR

APPLICATION SERIAL NO. 77424126

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77424126&doc_type=EAP&mail_date=20090317 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 3/17/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.