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  78/194153 TIGER CLAW

 

This letter responds to applicant’s communication filed on November 12, 2003.

 

E-Mail Address of Applicant Is Noted and Entered

 

The applicant’s e-mail address is noted and entered into the record.

 

FINAL REQUIREMENT:  Identification of Goods Is Indefinite

 

The wording “fasteners” in the identification of goods is unacceptable as indefinite because it identifies a wide variety of goods.  In this instance, it is not clear if the applicant is referring to, among other things, bolts, nails, rivets, and/or screws.  Thus, the applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses.  TMEP §1402.01.

 

The applicant may adopt the following identification, in whole or in part, if accurate:   

 

Metal fasteners, metal deck fasteners and hidden metal deck fasteners, namely, [applicant must list specific items, i.e. bolts, nails, rivets, screws] for use in the construction of decks, boardwalks, docks, and patios, sold to retail lumber and hardware stores and also directly to builders, in International Class 6.[1] 

 

TMEP sections 1402.01 and 1402.03. 

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

FINAL REQUIREMENT:  Inquiry of Significance

 

The applicant must indicate whether the wording "TIGER CLAW," “TIGER” or “CLAW” has any significance in the relevant trade or industry or as applied to the  goods.  37 C.F.R. Section 2.61(b).

 

FINAL REQUIREMENT:  BASIS:  Cannot Assert §1(a) and §1(b) for the Same Goods or Services

 

The applicant asserts use of the mark in commerce for “fasteners, deck fasteners, hidden deck fasteners, These are metal fasteners used in the construction of decks, boardwalks, docks, patios, etc. This product is sold through retail lumber and hardware stores. It may also be sold direct to the builder” and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods.  An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).  The applicant must delete one basis or divide the goods between the two bases, as appropriate. 

 

FINAL REQUIREMENT:  Specimen of Use Is NOT Legible

 

While the application file indicates that the applicant submitted a specimen, the scanned picture of the package is not legible.  Thus, the applicant must submit an additional, legible specimen identical to that originally filed.  The examining attorney regrets any inconvenience to the applicant.

 

Proper Response to Final Action

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146; TMEP Chapter 1700 regarding petitions.  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. §2.65(a). 

 

Please also note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08            

 

 

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

(703) 308-9105 Ext. 261

Fax:  (703) 746-8105

 

 

 

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.