UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/509340 LIBERATOR

 

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

 

APPLICATION IS NOT ENTITLED TO REGISTER – Likelihood of Confusion With a Prior Pending Application

 

The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  Please note that the examining attorney has found a potentially conflicting pending application.

 

The examining attorney encloses information regarding pending Application Serial No. 78/492685 (LIBERATOR).  See the attached document.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

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 in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

Action on this application will be SUSPENDED pending the disposition of Application Serial No. 78/492685 (LIBERATOR), upon receipt of the applicant's response resolving the following requirements. 

 

Identification of Goods Is Unacceptable

 

The wording “clothing” in the identification of goods is unacceptable as indefinite because it identifies a wide variety of goods, i.e. shirts, hats, shorts, skirts.  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:   

 

Clothing namely, [applicant must list individual goods, i.e. t-shirts, shirts, hats, shorts, skirts]; footwear, in International Class 25.[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.

 

Inquiry of Significance

 

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

 

NOTICE:  Improper Use of Registration Symbol

 

The specimen shows use of the federal registration symbol with the mark; however, Office records do not show that the mark is registered.  The applicant may not use the federal registration symbol until a mark is registered in this Office.  After registration of the mark, the applicant may use the symbol only with the specific goods or services recited in the registration. TMEP §§906 and 906.02.

 

Response Guidelines

 

If the applicant submits a response electronically, an electronic signature is required.  An applicant, registrant or attorney may sign an electronic communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an electronic 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 format.  TMEP  Section 304.08.           

 

To ensure that its response is considered timely, applicant may wish to add the following completed “certificate of mailing” to the end of its response.  Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced.  See TMEP §§305.02 et seq.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA  22313-1451, on the date below.

 

________________________________________________

(Typed or Printed Name of Person Signing Certificate)

________________________________________________

(Signature)

________________________________________________

(Date)

The certificate of mailing procedure does not apply to the initial filing of trademark applications.  37 C.F.R. §2.197(a)(2).

 

On-line Trademark Status Information

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  Please note that an application serial number or registration number is needed to be able to access this database.  TARR is available 24 hours a day, 7 days a week.

 

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.

 

 

Danielle Mattessich

/danimattessich/

Trademark Attorney

Law Office 106

Tel:  (571) 272-9324

Fax:  (571) 273-9324

 

 

 

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.