Offc Action Outgoing

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:

 

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

 

Requirement: Clarify Identification of Goods

The wording “TOYS, GAMES AND PLAYTHINGS” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of each item of the goods.  If there is no common commercial name for the product, the applicant must describe the product in detail and its intended uses. TMEP §1402.01.  The applicant may amend the wording to “Toys, namely, {specify type, e.g., “bath toys”}; games, namely, {specify type, e.g., “board games”}; and playthings, namely, {specify type, e.g., “puppet theatres”} in Class 28, if accurate.

 

For assistance with identifying 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.

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

DISCLAIMER

The applicant must disclaim the descriptive wording "PINK” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive of toys, games, and playthings that feature the color pink.  (See attachments.) 

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “PINK” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

Significance

Applicant must specify whether the wording “BARBIE PINK” or “PINK” has any significance in the toy, game, or plaything industry or as applied to the goods described in the application.  See 37 C.F.R. §2.61(b); TMEP §§808.01(c), 814.

 

Further, applicant must provide additional information about this wording to enable proper examination of the application.  Specifically, applicant must respond to the following questions: 

 

• Do, or will, the goods feature the color pink?

 

• Do, or will, the packaging for the goods feature the color pink?

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Search Results: Potential Section 2(d)  Refusal

Information regarding pending Application Serial Nos. 77435244 and 77435259 is enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks.  If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

 

 

 

 

John Kelly /jmck/

Trademark Attorney

Law Office 117

571.272.9412

Fax: 571.273-9117 (official responses only)

 

 

 

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.