Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/163965

Mark:  MFC

 

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

Likelihood of Confusion

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

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  TMEP § 1402.01.  In Class 2, the applicant must specify the type of “toner,” e.g., “toner for copiers.”  Further, “ink cartridges” is too vague.  The applicant must specify how they are used, e.g., “ink jet cartridges.”  In Class 16, the wording “printing ribbons” is too vague.  The applicant must further specify their use, e.g., computer printer ribbons, dot matrix printer ribbons, computer printer ink ribbons, label printing machine ribbons, typewriter ribbons, inking ribbons, computer ribbons, office machine ribbons, etc.  Further, the wording “printer ribbon refills” is unclear.  The ribbons themselves are refills, so this wording does not seem necessary.   See below for the examiner’s suggestions for the Class 9 goods.    

 

The applicant may adopt the following identification, if accurate:

 

Class 2:                        Toner for photocopiers and toner cartridges; ink jet cartridges

 

Class 9:               Multifunction devices, namely, combination of digital photocopier machines, computer  printers [must specify the exact nature of the “printers” – e.g., computer printer, etc.],  scanners, PC-facsimile machines, [“video capture” – this wording does not identify an electronic good in Class 9 – “video capture” is a function, but not a good.  The applicant must further specify or delete this wording] and parts thereof, for use in copying, printing, scanning, video capture and/or transmitting documents and images; computer software, namely, built-in media drivers for multifunction machines for printing or sending data; computer software for use in electronic filing system for reading, processing, storing, receiving, retrieving, editing, printing, displaying and sending image data; communications servers; network software used with the internet, computer networks, hubs, switchers, routers and computers for [specify] [the wording “network software” and “for use with” is not sufficient to describe the software’s functions – the applicant must specify how the software is used]; and image forming drums, namely, [specify] used for [specify][the wording “image forming drums” is too vague – applicant must specify the common commercial names of these goods and/or specify exactly how they are used]

 

Class 16:                        Computer printer ribbons.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

More Information Required

The examining attorney requires information about the goods to allow proper identification and classification of the goods, as well as to determine whether all or part of the mark is merely descriptive as applied to the goods.  TMEP §§ 814 and 1402.01(d).  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit the information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

 

In all cases, the submitted factual information must make clear how the goods operate, its salient features, and its prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

 

Specimen of Use Required – Classes 2 and 16

An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services.  TMEP §904.  The application does not contain specimens for Classes 2 and 16.  (The goods in Class 9 are intent to use, thus no specimen is required.)   

 

The applicant must submit a specimen for Class 2 and a specimen for Class 16, and must submit the following statement:

 

The specimens were in use in commerce at least as early as the filing date of the application.

 

This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.  The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

                (Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

                    (Date)

 

If the applicant cannot comply with the requirement for specimens of use for the 1(a) basis asserted for the Class 2 and 16 goods, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.  In this case, the applicant may wish to amend the application to assert a 1(b) basis for Classes 2 and 16.

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).  See declaration above.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please feel free to telephone the assigned examining attorney.

 

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(703) 308-9103, x409

(703) 746-8103 (fax)

ecom103@uspto.gov

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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