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: 6/26/2009

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

 

            A.        No Conflicting Marks Found

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

 

             B.       Identification and Clarification of Goods/Services

 

• International Class 010: sex aides; marital aides; penis pumps

The wording “sex aides; marital aides” in the identification of goods/services must be clarified because it is too broad and could include goods/services in other international classes.  See TMEP §§1402.01, 1402.03. 

 

In addition, the wording does not provide sufficient specificity. 

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods, if accurate:    See TMEP §1402.01.

 

 

International Class 010: sex aides and marital aides in the nature of adult sexual stimulation aids namely, {indicate type, e.g., artificial penises, penis enlargers, vibrators, benwa balls, artificial vaginas; penis pumps

 

 

• International Class 016: printed matter; instructional material; packaging; bags for packaging; boxes of cardboard or paper; all of the aforementioned goods being associated with or relating to sex aides, sex toys, marital aides or penis pumps

The wording “sex aides; marital aides” in the identification of goods/services must be clarified because it is too broad and could include goods/services in other international classes.  See TMEP §§1402.01, 1402.03. 

 

In addition, the wording does not provide sufficient specificity. 

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods, if accurate:    See TMEP §1402.01.

 

International Class 016: printed matter, namely, ___________________{indicate specific items, e.g. printed calendars, printed forms, printed invitations};  instructional material printed instructional and teaching material except apparatus in the field of ______________{specify area of use, e.g., human sexuality}; packaging namely, _______________{indicate specific type, e.g., plastic bags for packaging, plastic bubble packs for wrapping or packaging}; [plastic] bags for packaging; boxes of cardboard or paper; all of the aforementioned goods being associated with or relating to sex aides, sex toys, marital aides or penis pumps

 

 

• International Class 028: sex toys

The wording “sex toys” in the identification of goods/services must be clarified because it is too broad and could include goods/services in other international classes.  See TMEP §§1402.01, 1402.03.  For example all of the sexual stimulation devices are listed in class 010.

 

In addition, the wording does not provide sufficient specificity. 

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may adopt the following identification of goods, if accurate:    See TMEP §1402.01.

 

International Class 028: sex toys, namely, game equipment sold as a unit for playing mind-body sexual, emotional and psychological games for adult couples and individuals

 

 

Identifications of goods and/or services can be amended only 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.

 

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.

 

 

 

             C.       Certificate of Registration Required

 

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must submit a copy of the foreign registration from applicant’s country of origin.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

 

 

             D.       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.  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 date of issuance 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).

 

In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.  The signer must personally sign and date the response or manually enter their electronic signature in the signature block.  TMEP §605.02

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

/wrossman/

William M. Rossman

Trademark Examining Attorney

Law Office 109

William.Rossman@USPTO.GOV

571-272-9029

 

 

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 6/26/2009 FOR

APPLICATION SERIAL NO. 77702772

 

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=77702772&doc_type=OOA&mail_date=20090626 (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 6/26/2009.

 

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.