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  78/341007

 

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

 

INDEFINITE IDENTIFICATION OF  SERVICES

 

The recitation of services is unacceptable as indefinite because it refers to written forms, which will not likely be separate goods in trade and also does not state what is being tested. Also, multiple classes of serices are suggested.  The applicant may adopt the following recitation, if accurate:  Videotaping surfaces of buildings to determine the presence of mold.  In class 41.  Inspecting and testing buildings for the presence of mold.  In class 42.   TMEP §1402.11.

 

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

 

MULTIPLE CLASS REQUIREMENTS

 

The application identifies services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

The applicant must list the services by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

DRAWING ISSUES

 

Applicant claims that the mark consists of black letters with a green background.  This disagrees with the drawing, which shows the letters in white. 

 

Applicant must submit either (1) a corrected color claim and/or description that agree with the colors depicted in the drawing of the mark, or (2) a color drawing that agrees with the color claim and description.  37 C.F.R.  37 C.F.R. §2.52(b)(1).  The drawing and color claim and description must all agree.

 

Applicant must submit the following:  (1) a statement that “the color(s) <specify> <is/are> claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>.”  37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

Note that in this regard, applicant has referred to “a green background”.  The mark as shown in the drawing assumes that the background will be in the form of a rectangle in green.  If there will be no green rectangle, this should not have been presented as a part of the mark in the drawing. Use of a green rectangle assumes that the mark, when used, will consist of the words (in black or white, depending upon how applicant responds hereto) displayed on the green rectangle.

 

SEARCH CLAUSE

 

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.

 

GENERAL INFORMATION

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

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

 

“TMEP” refers to the Trademark Manual of Examining Procedure (3rd ed., Rev. 1, June, 2002), available on the United States Patent and Trademark Office web site at www.uspto.gov.

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Steven Foster/

Steven Foster, Trademark Attorney

Law Office 106

(703) 308-9106 Ext. 123

Fax number for the Law Office: (703) 746-8106

 

 

 

 

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 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.