UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/098500

 

 

The assigned trademark examining attorney has reviewed the referenced application filed on February 2, 2007, and has determined the following.

 

SEARCH RESULTS

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

CLAIM OWNERSHIP

 

If applicant is the owner of U.S. Registration Nos. 2891463 and 3104677, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2891463 and 3104677.

 

 

GOODS

 

The wording referenced below in the identification of goods is indefinite and must be clarified because it is vague and could include goods that belong in more than the listed classes.  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.  TMEP §1402.01.

 

The applicant may amend to any or all of the following, as may be accurate.  Suggested amendments appear in bold, while wording that requires further clarification appears in italics.  The correct classification for the goods/services also appears below.

 

 

Class 18:             Articles made from leather and imitations of leather, namely, (name each item, e.g., leather purses); (amend “bags” top state type of bags, e.g., messenger bags); tote bags; purses; handbags; wallets; umbrellas; diaper bags

 

 

Class 20:             wind chimes (note these belong in Class 20, not in Class 21)

 

 

Class 21:               Housewares, namely, (name each item, e.g., bowls); household containers (insert semi-colon here, after “containers”);  dinnerware; beverage glassware; beverageware; (specify composition of and correct class for coasters—leather and plastic coasters, in Class 21, paper coasters, in Class 16, cloth coasters in Class 24); removable insulators for drink cans and bottles; lunch kits consisting of lunch boxes and insulated containers sold as a unit; serving trays; hair brushes and hair combs; (specify, electric and/or manual) toothbrushes; (specify content of and correct class for figurines—figurines of china, crystal, earthenware, glass, porcelain, terra cotta, in Class 21, figurines of bone, ivory, plaster, plastic, wax, wood in Class 20, figurines of clay, indicate stone, concrete, or marble in Class 19); plastic cups; cookie jars; paper cups; paper plates; wastepaper baskets

 

 

 

 

Class 25:            clothing, namely, (name each item, e.g., T-shirts and pants); footwear; headwear

 

 

Class 32:             non-alcoholic beverages, namely, (name types, e.g., non-alcoholic beverages with tea flavor and non-alcoholic malt beverages); juices, namely, (name each, e.g., fruit juices and vegetable juice beverages—note that other types of juices belong in other classes, e.g., clam juice and vegetable juices for cooking, in Class 29)

 

 

 

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

 

The applicant is advised that the above suggestions may not be a complete listing of acceptable specifications available to the applicant, but are instead provided only as suggestions.  It is the applicant's duty to properly identify and classify the goods and services.   TMEP Section 1402.01(e).  For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ or  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please also note that the applicant may not use the indefinite wording “and/or,” “or,” or “etc.” in its identification of goods/services.  The applicant must use the more definite word “and” when listing more than one item.  The applicant may not use parentheticals in its description of goods/services.  The examining attorney used them above merely to indicate wording that requires further amendment.

 

 

 

MULTI-CLASS FILING RULES

 

The application identifies goods and/or services that are classified in at least five classes; however, the fees submitted are sufficient for only four class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810-810.01 and 1403.01.

 

Therefore, applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

 

Fee Information

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

 

NOTE: APPLICABLE LEGAL AUTHORITIES

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005).

“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (4th ed., 2005), available on the United States Patent and Trademark Office website at  http://tess2.gov.uspto.report/netahtml/tidm.html   This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.   

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  Please note that an application serial number or registration number is needed to be able to access this database.  TARR is available 24 hours a day, 7 days a week.

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

Phone:  (571) 272-9181

Fax:  (571) 273-9106

Email:  elissagarber.kon@uspto.gov

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.