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  78/181398

 

This letter responds to the applicant’s communication filed on May 6, 2003.

 

The applicant’s amendment to the identification of goods is accepted and entered as amended.

 

In the prior Office Action of April 30, 2003, the applicant was required to clarify the nature of its entity as well as indicate whether OPB has any meaning in the trade.  In its response, the applicant indicated that it is a partnership which appears to be consisting of a single person.  Moreover, the applicant fails to respond to the significance of OPB requirement.  The examining attorney has considered the applicant's amendments carefully but has found that the applicant’s response to be unacceptable.  For the reasons below, the above requirements are maintained and are made FINAL.

 

PARTNERSHIP NAMES AND CITIZENSHIP OMITTED

 

In its Response, the applicant appears to indicate that it is a partnership, however, the applicant lists a single individual.  A partnership is defined as “a legal contract entered into by two or more persons in which each agrees to furnish a part of the capital and labor for a business enterprise, and by which each shares a fixed proportion of profits and losses.”[1]  Accordingly, in order for the applicant to be considered a partnership, it must be made up of more than one person. 

 

The applicant must specify the names and the national citizenship or the state or country of organization or incorporation of the general partners.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP sections 802.03(b) and 802.04.  The applicant may wish to adopt the following, if accurate:

 

            OCT USA, a partnership organized under the laws of the State of California, composed of the following individuals: [Specify by listing the names and citizenship of the general partners].

 

GENERAL INQUIRY ON SIGNIFICANCE

 

In the original Office Action, the examining attorney required the applicant to indicate the significance of OPB.  In its Response, the applicant fails to meet this requirement.  Accordingly, this requirement is maintained and made FINAL.

 

The applicant must indicate whether “OPB” has any significance in the relevant trade.  37 C.F.R. §2.61(b).

 

CONCLUSION

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

HOW TO RESPOND TO THIS OFFICE ACTION

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

To expedite processing, the Office encourages parties to file documents through the Trademark Electronic Application System, at http://www.gov.uspto.report/teas/index.html, wherever possible. 

 

Effective May 1, 2003, the mailing addresses for filing trademark-related documents on paper has changed.  See notices at 68 FR 19371 (April 21, 2003) and 68 FR 14332 (March 25, 2003). 

 

All trademark-related correspondence filed by mail, except for documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:

 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, Virginia  22202-3514

 

The mailbox designations previously listed in TMEP §305.01 are no longer in use.

 

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/.  Paper documents and cover sheets to be recorded in the Assignment Services Division should be sent to:

 

Mail Stop Assignment Recordation Services

Director of the United States Patent and Trademark Office

P. O. Box 1450

Alexandria VA  22313-1450

 

Copies of trademark documents can be ordered through the Office’s website at http://www.uspto.gov.  Requests for certified or uncertified copies of trademark documents filed on paper should be sent, with an authorization to charge the fee to a credit card or USPTO deposit account, to: 

 

Mail Stop Document Services

Director of the United States Patent and Trademark Office

P. O. Box 1450, Alexandria VA  22313-1450

 

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 avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.

(Date)

 

________________________________________________________________________

(Signature)

 

________________________________________________________________________

(Typed or printed name of the person signing the certificate)

 

The certificate-of-mailing procedure does not apply to the filing of certain documents, such as trademark applications, statements of use, requests for extensions of time to file statements of use, amendments to allege use, affidavits under Sections 8, 12(c) or 15 of the Trademark Act, renewal applications and petitions to cancel registrations.

 

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

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

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

 

***IMPORTANT NOTICE***

 

Changes in Procedures for Filing Trademark Documents By Express Mail

 

Effective June 24, 2002, 37 C.F.R. §1.10(a) has been amended.  The Express Mail procedure provided in 37 C.F.R. §1.10 no longer applies to the following trademark documents:

 

·        Trademark/Service Mark Application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126

·        Statement of Use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d)

·        Amendment to Allege Use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c)

·        Request for Extension of Time to File a Statement of Use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d)

·        Affidavit or Declaration of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. §1058

·        Renewal Request under Section 9 of the Trademark Act, 15 U.S.C. §1059

·        Combined Filing under Sections 8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059

·        Combined Affidavit or Declaration under Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065

·        Request to Change or Correct Address

 

If the documents listed above are filed by Express Mail, they will receive a filing date as of the date of receipt in the Office and not the date of deposit with the USPS.  See notice at 67 Fed. Reg. 36099 (May 23, 2002), available at http://www.gov.uspto.report/web/offices/com/sol/notices/expmailrule2.pdf.

 

 

 

 

 

 

 

Howard Smiga /HS/

Trademark Examining Attorney

Law Office 102

(703) 308-9102, x197

(703) 746-8102 Fax

Howard.Smiga@uspto.gov

 

 

803.02(b)    Partnership, Joint Venture or Other “Firm”

If a partnership, joint venture, or other “firm” has been organized under a particular business name, the application should be filed in that name.  If the partnership or firm has not been organized under a business name, then the names of the members should be listed as though they composed a company name.  If a partnership or joint venture is doing business under an assumed name, this may be indicated, using an assumed name designation.  See TMEP §803.02 regarding assumed name designations.

 

See TMEP §803.03(b) for information about identifying a partnership or joint venture as a legal entity.

 

803.03     Legal Entity of Applicant

 

Immediately after the applicant’s name, the application should set out the applicant’s form of business, or legal entity, such as partnership, joint venture, corporation, or association.  The words “company” and “firm” are indefinite for purposes of designating an applicant’s legal entity, because those words do not identify a particular type of legal entity in the United States.  (However, the word “company” is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations.  See TMEP §803.03(i).)

 

Whether the Office will accept the identification of an applicant’s entity depends on whether that entity is recognized by the applicant’s state of domicile.

 

If other material in the record shows a different type of entity than is set out in the written application, the examining attorney should ask for an explanation, and require amendment if necessary.  However, in view of the broad definition of a “person properly authorized to sign on behalf of an applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), no explanation is usually required merely because the person signing a declaration has a title that refers to a different type of entity.  See TMEP §§803.06 and 1201.02(c) regarding Office policies governing correction of an applicant’s name. 

 

803.03(b)    Partnership, Joint Venture or Other “Firm” 

The application of a partnership or a joint venture, after setting forth the applicant’s name and entity, should specify the state or country under whose laws the partnership or joint venture is organized.  37 C.F.R. §2.32(a)(3)(ii).  In addition, the applicant should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.  37 C.F.R. §2.32(a)(3)(iii).  This requirement also applies to a partnership that is a general partner in a larger partnership.  Limited partners or silent or inactive partners need not be listed.  The following format should be used:

"_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________.”

In the case of a partnership consisting of ten or more general partners, if the partnership agreement provides for the continuing existence of the partnership in the event of the addition or departure of specific partners, the Office will require that the applicant provide the names, legal entities, and national citizenship (or the state or country of organization) of the principal partners only.  If the principal partners exceed ten, the applicant need list only the first ten principal partners.  If there is no class of principal partners, the applicant may list any ten general partners.

 

Upon death or dissolution of a partner or other change in the members that compose a partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership agreement provides for continuation of the partnership in the event of changes in partners.  This same principle also applies to joint ventures.  See TMEP Chapter 500 regarding changes of ownership.

 

The term “firm” is not an acceptable designation of the applicant’s entity because it does not have a universally understood meaning.  The examining attorney should require a definite term such as “partnership” or “joint venture” when it is necessary to identify these entities.