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: 2/5/2009

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.  The examining attorney has determined the following.

 

SEARCH RESULTS

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

CLAIM OF OWNERSHIP OF REGISTRATIONS

If applicant is the owner of U.S. Registration Nos. 0578857, 1930566, 2851045, and 3548244, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 0578857, 1930566, 2851045, and 3548244.

IDENTIFICATION OF GOODS

The wording of the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Furthermore, it identifies goods in several international classes.  Accordingly, applicant may change this wording to the following, if accurate.  See TMEP §1402.01.

 

Men's and women's washable or cleanable apparel and uniforms, namely, medical scrub tops and medical scrub pants for employees and patients in the healthcare industry (International Class 10);

 

Lab coats for employees and patients in the healthcare industry (International Class 25).

 

Applicant should note that the above suggested identification of goods is acceptable as written.  Any alteration may render it unacceptable.  Accordingly, if the applicant wishes to amend the goods differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

Please further 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. Section 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 original identification. 

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

The application identifies goods that are classified in at least two classes; however, the fees submitted are sufficient for only one 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(s) already paid, or (2) submit the fees for the additional class(es). 

 

In a multiple-class application based on use in commerce, a specimen is required for each class specified in the identification of goods and/or services.  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 and/or services 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 and/or services.  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 and/or services by international class.  TMEP §§801.01(b), 1403.01.

 

 

 

 

 

 

/Geoffrey Fosdick/

Geoffrey Fosdick

Trademark Attorney

Trademark Office 111

(571) 272-9161

 

 

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 2/5/2009 FOR

APPLICATION SERIAL NO. 77606146

 

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=77606146&doc_type=OOA&mail_date=20090205 (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 2/5/2009.

 

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.