UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  78/366993

 

The following issues were discussed in communication with Jonathan Hyman on September 3, 2004.

 

Disclaimer

The applicant must disclaim the descriptive wording "GRIP" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).  The wording is merely descriptive because it immediately describes a feature of the goods or services.  Specifically, the wording immediately tells customers that the applicant offers goods and/or services that are grip tape. 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use GRIP apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Request for Information

The applicant must directly answer the following question(s) pursuant to the authority granted the examining attorney by 37 C.F.R. §2.61(b):

 

Does MOB have any significance as applied to the goods or services other than trademark significance?

 

Does MOB have any significance in the relevant trade or industry other than trademark significance?

 

If the wording MOB is an acronym, the applicant will define the acronym.

 

Please note that failure to comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application.  See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

Identification and Classification

The identification of goods is unacceptable as indefinite because it does not describe the goods with sufficient specificity.  In the identification of goods, the applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

If there is no common commercial or generic name for the goods, then the applicant must describe the goods, the intended consumer of the goods, and the main purpose and intended uses of the goods.  TMEP §1402.01.

 

Please note that the vast majority of goods have a common commercial name.  Acceptable common commercial names are included in the Trademark Acceptable Identification of Goods & Services Manual available free of charge at the Office web site located at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

However, the applicant may adopt the following identification of goods, if accurate:

 

Sporting goods, namely, skateboard grip tape in International Class 28.

 

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.

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays. 

 

Questions About This Action

If the applicant has any questions regarding this Office action before October 20, 2004, please call the examining attorney at 703.308.9114 Ext. 271.  To reach the undersigned attorney by telephone after October 20, 2004, please call 571.272.9209.

 

/Brian J. Pino/

Examining Attorney

Law Office 114

Before Oct. 20, 2004: 703.308.9114 Ext. 271

After Oct. 20, 2004: 571.272.9209

 

 

 

 

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