Offc Action Outgoing

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: 8/21/2009

 

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.

 

SEARCH FOR CONFLICTING MARKS

 

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).

 

Applicant must respond to the requirement set forth below.

 

 

 

 

IDENTIFICATION OF GOODS

The wording “clothing, namely, compression shirts, compression sleeves” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

For example, “medical compression stocking and tights”, are designated in Class 10 with related goods for medical use.

Applicant may adopt the following identification of goods in Class 25, if accurate: 

“Clothing, namely shirts, hats, caps, sports uniforms, pants, shorts; clothing for athletic use, namely, compression shirts, compression sleeves, shooting shirts”. 

See TMEP §1402.01.

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 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.

CLAIM OF OWNERSHIP OF PRIOR REGISTRATION

 

If applicant is the owner of U.S. Registration No. 3650978 (see attached), then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 3650978.

SUPPLEMENTAL REGISTER NOT NECESSARY – MUST AMEND TO PRINCIPAL REGISTER

Applicant has applied for registration of its mark on the Supplemental Register.  However, applicant’s mark is eligible for registration on the Principal Register.  A mark that is clearly eligible for registration on the Principal Register cannot be registered on the Supplemental Register.  Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm’r Pats. 1957); TMEP §815.01.  Applicant must amend the application to the Principal Register. 

Pending a proper response, registration on the Supplemental Register is refused because the mark is eligible for registration on the Principal Register.  TMEP §815.01; see 15 U.S.C. §1091(a).

 

 

TELEPHONE RESPONSE SUGGESTED

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

/Julie M. Guttadauro/

Trademark Examining Attorney

Law Office 106

(571) 272-5875

(571) 273-9106 (Fax)

 

 

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77744451) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 8/21/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77744451&doc_type=OOA&mail_date=20090821 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 8/21/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

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.