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  78/455213

 

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

 

1.  Information:  No Similar Marks

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02. 

 

    However, the applicant must respond to the following requirements.

 

2.  Requirement:  New Drawing

Applicant must submit a new drawing with the copyright information “©EVERLAND” and the name  deleted because it is not part of the mark.  TMEP §§807.04 and 807.15.

 

3.  Requirement:  Clarify Color Description

Applicant must provide an amended  description of where the colors appear in the mark.   Because the wording “multi-colored letters” is not sufficiently definite.  37 C.F.R. §2.52(b)(1).  The following description is suggested:  “The mark consists of A white sheep, a pink zipper with a blue star, multi-colored letters for word "SHEEPO, with each letter having a different color, namely, aqua, pink, yellow, blue, green, and pink, respectively."  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.

 

4.  Requirement:  Goods/Services Outside Scope of Foreign Registration

Applicant must either (1) amend the identification of goods and/or services in the application to correspond to the goods and/or services identified in the foreign certificate of registration, or (2) delete the Section 44 basis for the goods and/or services beyond the scope of the foreign registration and substitute a basis under Trademark Act Sections 1(a) or 1(b) for those goods and/or services.  15 U.S.C. §§1051(a) or (b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972).  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.

 

The identification of goods and/or services in the application is not acceptable because it designates goods and/or services that are broader in scope than the identification set forth in the foreign registration.  37 C.F.R. §2.32(a)(6).

 

The following wording exceeds the scope of the goods and/or services in the foreign registration:  Rinse for clothes, Playpens for babies, Infant walkers, Paper plates, Paper cups, Shower curtains,. Curtains of textile or plastic(except shower curtain), and Decorative ribbons.  If applicant chooses to amend the identification of goods and/or services in the application to correspond to the foreign registration, then these goods and/or services must be deleted.

 

If applicant chooses to assert different bases in the same application, then applicant must clearly state that it is claiming more than one basis, and must separately list each basis, followed by the goods and/or services to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce, under Trademark Act Section 1(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

5.  Requirement: Correct Identification of Goods

The applicant must correct several items listed in the identification of goods. 

 

a.  as to beauty soaps

The current wording beauty soaps used to describe the goods needs clarification because it does not sufficiently describe the type of soap.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  [specify type, e.g., cosmetic, body cream, etc.], soap, in International Class 3.  TMEP §1402.01.

 

b.  as to sun oils

Applicant must clarify the identification of sun oils to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  sun tan oils, in International Class 3.  TMEP § 1402.01.

 

c.  as to Rinse for clothes

Applicant must clarify the identification of rinse for clothes to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  Fabric softeners for http://atlas/netacgi/ - h3http://atlas/netacgi/ - h5laundry use, in International Class 3.  TMEP § 1402.01.

 

d.  as to Key holders

The current wording key holders, in class 14, used to describe the goods needs clarification because the material from which the goods are made must be specified.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  key holders of precious metals, in International Class 14.  TMEP §1402.01.

 

e.  as to electronic clocks

The current wording electronic clocks used to describe the goods needs clarification because it does not sufficiently describe the type of clock.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  electronic [specify type, e.g., wall, alarm, etc.], clocks, in International Class 14.  TMEP §1402.01.

 

f.  as to as to books

The current wording books used to describe the goods needs clarification because the subject matter of the book must be specified.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  Books featuring [specify subject, e.g., arts and crafts instruction, etc.], in International Class 16.  TMEP §1402.01.

 

g.  Requirement: Correct Identification of Goods

Parentheses and brackets should not be used in identifications of goods and services, and the applicant must delete them from the current identification. TMEP §1402.12  The applicant should keep the wording in parenthesis in the identification to describe the various features, such as “not of metal,”  of the goods. TMEP §1402.01.

 

h. as to Bangsuk (Korean cushions)

The current wording Bangsuk (Korean cushions) used to describe the goods needs clarification because the type of cushion should be specified.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  Bangsuk, specifically, a Korean floor cushion, in International Class 20.  TMEP §1402.01.

 

i. as to quilt covers

Applicant must clarify the identification of quilt covers to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  Duvet covers, in International Class 24.  TMEP § 1402.01.

 

j.  as to bed covers

Applicant must clarify the identification of bed covers to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  bed covers, namely, [specify type, e.g., mattress covers, bed sheets, etc.], in International Class 24.  TMEP § 1402.01.

 

k.  as to sleeping mats

Applicant must correct the classification of the goods/services of sleeping mats in the application and amend the application to classify them in International Class 20.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

l.  as to curtains of textile or plastic(except shower curtain)

The current wording curtains of textile or plastic (except shower curtain) used to describe the goods needs clarification because it does not sufficiently describe the type of curtain.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate: [specify type, e.g., window, etc.], curtains of textile or plastic, in International Class 24.  TMEP §1402.01.

 

m.  as to wrapping cloth

Applicant must clarify the identification of wrapping cloth to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Additionally, the goods are misclassified.  Applicant may adopt the following identification of goods, if accurate:  Bundle http://atlas/netacgi/ - h16http://atlas/netacgi/ - h18wrapping cloths, in International Class 26.  TMEP § 1402.01.

 

n. as to ribbon fabrics

Applicant must clarify the identification of ribbon fabrics to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Additionally, the goods are misclassified.  Applicant may adopt the following identification of goods, if accurate:  Ornamental http://atlas/netacgi/ - h17http://atlas/netacgi/ - h19ribbons made of textiles, in International Class 26.  TMEP § 1402.01.

 

o.  as to Children's clothing,

The current wording “children’s clothing” used to describe the goods needs clarification because the type of clothing must be specified.  Applicant must clarify the identification of goods by listing clothing items.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  children’s clothing, namely, [specify clothing items, e.g., t-shirts, pajamas, etc.,] in International Class 25.  TMEP §1402.01.

 

p.  as to infant’s clothing,

The current wording “infant’s clothing” used to describe the goods needs clarification because the type of clothing must be specified.  Applicant must clarify the identification of goods by listing clothing items.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  infant’s clothing, namely, [specify clothing items, e.g., shoes, baby bunting, etc.,] in International Class 25.  TMEP §1402.01.

 

r.  as to Pins (not of precious metal),

The current wording pins not of precious metal used to describe the goods needs clarification because it does not sufficiently describe the type of pins.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate: marking pins, in International Class 26.  TMEP §1402.01.

 

s.  as to badges

Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant may adopt the following identification of goods, if accurate:  paper badges, in International Class 16; and/or Ornamental cloth http://atlas/netacgi/ - h9http://atlas/netacgi/ - h11patches, in International Class 26.  TMEP § 1402.01.

 

t.  as to rubber toys

The current wording rubber toys used to describe the goods needs clarification because the type of rubber toy is not sufficiently described.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  rubber  [specify toy type, e.g., character http://atlas/netacgi/ - h2http://atlas/netacgi/ - h4toys, balls, etc.], in International Class 28.  TMEP §1402.01.

 

u. as to metal toys

The current wording metal toys used to describe the goods needs clarification because the type of rubber toy is not sufficiently described.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  metal [specify toy type, e.g., clockwork http://atlas/netacgi/ - h2http://atlas/netacgi/ - h4toys, etc.], in International Class 28.  TMEP §1402.01.

 

v.  as to wooden toys

The current wording wooden toys used to describe the goods needs clarification because the type of rubber toy is not sufficiently described.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  wooden [specify toy type, e.g., kendo swords, etc.], in International Class 28.  TMEP §1402.01.

 

w.  as to plastic toys    

The current wording plastic toys used to describe the goods needs clarification because the type of rubber toy is not sufficiently described.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  plastic [specify toy type, e.g., character http://atlas/netacgi/ - h2http://atlas/netacgi/ - h4toys, clockwork toys, etc.], in International Class 28.  TMEP §1402.01.

 

x.  as to playing balls

The current wording playing balls used to describe the goods needs clarification because the type of ball is not sufficiently described.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  [specify ball type, e.g., playground, soccer, etc.] balls, in International Class 28.  TMEP §1402.01.

 

y.  as to dry cakes

The current wording dry cakes used to describe the goods needs clarification because it does not sufficiently describe the type or main ingredient of the cake.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:  Dried sugared http://atlas/netacgi/ - h29http://atlas/netacgi/ - h31cakes of rice flour, in International Class 30.  TMEP §1402.01.

 

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. 

 

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.

 

6.  Multiple Class Applications

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Joanna M. Dukovcic/

Trademark Examining Attorney

Law Office 103

Phone:  (571) 272-9707

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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