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: 9/22/2008

 

The assigned examining attorney has reviewed the trademark application identified above. Applicant must respond to all of the issues discussed below, before the response deadline. 15 U.S.C. §1062(B); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The examining attorney has searched the Office records, and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02.

 

However, applicant must respond to the following issues before the application can be approved for publication.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

Applicant may adopt the following identification, if accurate:  

 

Class 7

 

Power-operated trailer jacks, hydraulic trailer jacks, winches

 

Class 8

 

Hand-operated trailer jacks

 

Class 12

 

Tire carriers, in the nature of specially fitted hand trucks

 

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 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.

 

ADDITIONAL CLASSES OF GOODS

 

The application identifies goods and that are classified in at least 3 classes; however, the fees submitted are sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee already paid, or (2) submit the fees for the additional classes. 

 

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; or

 

         (2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

In a multiple-class application based on use in commerce, a specimen is required for each class specified in the identification of goods.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b), 1403.01.  Therefore, if applicant amends the application to add international classes, applicant must submit a specimen showing use of the mark for each added class.  In addition, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The specimen was in use in commerce on or before the application filing date.”  37 C.F.R. §2.59(a). 

 

If the additional specimen is identical to the specimen submitted with the application, and the application was properly verified, the verified statement is not necessary.  Further, if a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  TMEP §§904.01(b), 1403.01; see 37 C.F.R. §2.59(a).

 

The application identifies goods in multiple international classes; however, the dates of use apply to fewer than all the classes identified.  A multiple-class application based on use in commerce must include dates of use for each class in the application.  37 C.F.R. §2.86(a)(3); TMEP §1403.01. 

 

Therefore, applicant must provide dates of first use and use in commerce for each class of goods.  If the dates differ from those of record, then applicant must verify the new dates with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33.  37 C.F.R. §2.71(c); TMEP §903.05.

 

Applicant must list the goods by international class.  TMEP §§801.01(b), 1403.01.

 

SPECIMEN ADVISORY

 

The specimen submitted may not be acceptable as evidence of use on the goods identified, depending on how applicant amends the identification of goods. Regardless of whether applicant adds classes of goods, applicant should carefully review the specimen submitted to insure whether additional or substitute specimens are required with its response. 37 C.F.R. §2.86(a)(3); TMEP §§904.01(b), 1403.01.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

Applicant must specify whether the wording “F2” has any significance in the relevant trade or industry or as applied to the goods described in the application.  See 37 C.F.R. §2.61(b); TMEP §§808.01(c), 814.

 

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.

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an 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 title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant. TMEP §§605.02, 712.

 

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.

 

 

/Fred Carl III/

Law Office 108

571 272 8867 voice

571 273 9108 fax for official communication 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 9/22/2008 FOR

APPLICATION SERIAL NO. 77541433

 

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=77541433&doc_type=OOA&mail_date=20080922 (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 9/22/2008.

 

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.