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: 9/14/2007

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

PRIOR PENDING APPLICATION AS IT PERTAINS TO INTERNATIONAL CLASSES 9 & 16 ONLY

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 77028562.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Action on this application will be suspended pending the disposition of Application Serial No. 77028562, upon receipt of the applicant's response resolving the following informality.

 

DIVISION OF THE APPLICATION

 

Applicant has the option of dividing its application into two or more separate applications in accordance with 37 C.F.R. §2.87.  See TMEP §§1110 et seq. regarding requests to divide.  A request to divide can be used to divide out certain classes or specific goods or services that have been refused registration, for example, and allow the rest of the application to proceed toward registration.

 

Division of an application requires a fee of $100.00 for each new application created.  37 C.F.R. §2.6(a)(19).  In addition, when dividing out some, but not all, of the goods or services within a class, the application filing fee of $375 must be submitted for each new separate application created by the division.  37 C.F.R. §2.6; TMEP §1110.02.  Any outstanding time period for action by the applicant at the time of division will apply to each new separate application created by the division.  37 C.F.R. §2.87(b); TMEP §1110.05.

 

A request to divide an application may be filed at any time after filing the application and before the date the trademark examining attorney approves the mark for publication; or, during an opposition, upon motion granted by the Trademark Trial and Appeal Board.  In addition, a request to divide an application under Trademark Act Section 1(b) may be filed with a statement of use under 37 C.F.R. §2.88 or at any time between the filing of a statement of use and the date the trademark examining attorney approves the mark for registration.  37 C.F.R. §2.87(c); TMEP §1110.01.

 

If applicant wishes to divide the application, applicant should submit a request on paper in a separate document from any other amendment or response.  A request to divide cannot be filed electronically.  The title “Request to Divide Application” should appear at the top of the first page of this request.  37 C.F.R. §2.87(d).  Applicant must specify the classes or goods or services that are to be divided out of the application, and submit all the fees.

 

DISCLAIMER

 

Applicant must disclaim the descriptive wording “FITNESS” apart from the mark as shown because it merely describes the goods/services. Fitness is defined as the state or condition of being physically fit, especially as the result of exercise and proper nutrition[1].  Applicant’s goods and services are likely to pertain to fitness, among other things.  Therefore, the term describes the goods and services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “FITNESS” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a). 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  A disclaimer does not affect the appearance of the applied-for mark.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

The following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

 

The examining attorney attaches evidence in the nature of trademark registrations featuring the term in question that was disclaimed apart from the mark as shown.  The evidence is intended to support a disclaimer requirement.

 

REQUIREMENT FOR PARTICULAR INFORMATION

 

The applicant must submit a response to the following question in order to permit proper consideration of the application.  37 C.F.R. Section 2.61(b); TMEP section 814.

 

What does fitness stand for?

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone or e-mail the assigned examining attorney.

 

 

F Blandu

/fblandu/

l.o.117

tel. (571) 272-9128

fax (571) 273-9128

e-mail (for informal communications only) florentina.blandu@uspto.gov

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as 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.