To: | Procuremark L.L.C. (davidg@procuremark.com) |
Subject: | TRADEMARK APPLICATION NO. 78495813 - DOMINION - N/A |
Sent: | 5/19/2005 4:05:21 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/495813
APPLICANT: Procuremark L.L.C.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: DOMINION
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/495813
The assigned examining attorney has reviewed the referenced application and determined the following.
Although the examining attorney has searched the Office records and has found no similar registered mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 76585969. 37 C.F.R. §2.83.
There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following items.
The identification of goods is unacceptable as indefinite. In the identification the applicant must use the common commercial 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 those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§ 1402.01 and 1402.03(a).
If there is no common commercial name for the goods, then the applicant must describe the product(s) and intended uses. 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 for no charge at www.gov.uspto.report/web/offices/tac/doc/gsmanual.
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 that are not within the scope of goods set forth in the present identification.
The applicant may amend the identification to substitute the following wording, if accurate:
Metal fence products, namely, {specify, e.g., GALVANIZED CHAIN LINK FENCE, VINYL COATED CHAIN LINK FENCE AND BARBED WIRE, NUTS, BOLTS} in International Class 6.
TMEP § 1402.11.
Applicant has paid for one class. 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 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.
Applicant must provide a color claim and description using common color names, e.g., red, yellow, blue. Commercial color names must be supplemented with a generic description of the color(s). TMEP §§807.07(a)(i) and (a)(ii). The following is suggested:
(1) a statement that “the color(s) black and gray claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “The mark consists of a stylized version of the word ‘DOMINION’ where the color black appears in the first and last letters, namely, ‘D’ and ‘N’ in the mark, and the color gray appears in the middle letters ‘OMINIO.’” 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(ii).
Applicant must clarify its entity type because there is an inconsistency in the application. Specifically, the application indicates that the applicants are Procuremark, LLC and David Goubeauz an individual U.S. citizen.
A mark is usually owned by a single business entity or one individual. If both named applicants own the mark jointly, they must state that they are joint applicants. TMEP §803.03(d). Applicant cannot amend the application to designate another entity as the applicant. If the application was filed in the name of the wrong party, then this application is considered void. In such a case, the true owner may refile a new application for the mark, with a new filing fee. TMEP §803.06.
The applicant is identified in part as "Procuremark , LLC" and the entity type is identified as a “corporation.” Applicant must change the “Applicant’s Entity Type” section of the application to the following, if accurate: " Procuremark , LLC, a limited liability company (or limited liability corporation, if accurate) organized under the laws of Kansas.” TMEP §803.03(h). It appears that Kansas uses the designation “limited liability company.” See http://www.kssos.org/forms/business_services/DL.pdf.
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.
Copies of Documents
The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.gov.uspto.report/external/portal/tow. Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR. The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access. This conversion process is expected to take several years.
Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.
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.
/M. Catherine Faint/
Examining Attorney
Law Office 103
phone: 571-272-9274
fax: 571-273-9103
email: Catherine.Faint@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.