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: 4/17/2009

 

 

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.

 

Amendment to Drawing of Mark not Acceptable:

 

The proposed amendment of the mark is unacceptable because it would materially alter the essence or character of the mark.  See 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (holding “[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, [to] be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (holding proposed amendment to replace typed drawing of THE WINE SOCIETY OF AMERICA with a special form drawing including such wording with a crown design and a banner design bearing the words IN VINO VERITAS to be a material alteration); TMEP §§807.14 et seq.

 

A mark cannot be amended if the change would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(c).

 

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).  “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  Visa Int’l Serv. Ass’n v. Life Code Sys., Inc.,220 USPQ 740, 743 (TTAB 1983).  “That is, the new and old forms of the mark must create essentially the same commercial impression.”  In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); see TMEP §807.14.

 

The original mark consisted of the word IRPREL; the amendment changed the term to ISUPREL, having a different appearance and pronunciation. Therefore , the amendment results in a material change of the mark and cannot be permitted.

 

Indefinite Identification of Goods:

 

The wording “products” in the identification of goods is indefinite and must be clarified because the exact nature of such products is unknown.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Please specify the nature of such items—i.e. preparations, etc.

 

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.

 

Claimed Prior Registration:

 

Applicant’s claim of ownership of U.S. Registration No. 0436982 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is expired.  Only claims of ownership of live registrations are printed.  37 C.F.R. §2.36; TMEP §812.

 

 

 

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.

 

 

 

Henry S. Zak

/Henry S. Zak/

Examining Attorney

Law Office 117

(571) 272-9354

 

 

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 4/17/2009 FOR

APPLICATION SERIAL NO. 77664191

 

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=77664191&doc_type=OOA&mail_date=20090417 (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 4/17/2009.

 

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.