UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NOTICE OF SUSPENSION

 

ISSUE/MAILING DATE: 12/16/2009

 

 

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.uspto.gov/rsi/rsi.  The Office will conduct periodic status checks to determine if suspension remains appropriate.

 

 

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No(s). 78095659 and 78096063

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application(s) was sent previously.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

 

The following refusal(s)/requirement(s) is/are continued and maintained:

 

The following proposed wording for goods and/or services in International Class 20 is not acceptable because it is beyond the scope of the goods and/or services in the application as filed:  “ornamental novelty buttons”  See 37 C.F.R. §2.71(a).  Identifications 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.  In addition, the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1402.01(c), 1904.02(b).  The scope of the identification for purposes of permissible amendments is limited by the class.  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). 

 

Specifically, this wording is beyond the scope of the original wording because the identification does not specify if the buttons are made of plastic or wood. The original identification of goods listed “goods of wood and plastics” and ornamental novelty buttons, which could be made of metal, are outside the scope of that identification.

 

The applicant is also informed that “ornamental novelty buttons” are properly classified in International Class 26, regardless of their material composition. Therefore, should the applicant limit the goods to stay within the scope of the original ID, class 26 would need to be added to the application.

 

 

 

 

/Teresa Rupp/

Trademark Senior Attorney

Law Office 106

Phone - 571-272-9329

Fax - 571-273-9106

 

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.