Offc Action Outgoing

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  78/523913

 

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

 

Search Results

 

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

 

Identification of Goods

 

While most of the identification of goods is acceptable, the applicant must clarify several terms as set out below.  Additionally, applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods that are classified in at least three international classes, however applicant paid the fee for only one class.

 

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Also, as a point of clarification: if applicant intends to use its mark in connection with the goods listed, as opposed to performing manufacturing services for others, applicant must delete the leading phrase “manufacturing services in the field of” from the identification of goods.  If, however, applicant is providing manufacturing services for others, applicant must then amend the application to classify the services in International Class 40.  The following suggestions are based on the presumption that applicant intended to use the mark in connection with goods included in International Class 16.

 

The wording “photo cassette cases” in the identification of goods needs clarification because it is properly classified in International Class 9.

 

The wording “photo storage devices made of paper” in the identification of goods needs clarification because it is indefinite; specific items must be listed by their common commercial or generic names.  Applicant may change this wording to “photo storage boxes, envelopes, paper folders,” if accurate.  TMEP §1402.01.

 

The wording “books” in the identification of goods needs clarification because applicant must specify the subject matter or field of use of the books.  Applicant may change this wording to “books in the field of [indicate subject matter],” if accurate.  TMEP §1402.01.

 

The wording “magazines” in the identification of goods needs clarification because applicant must specify the subject matter or topic of the magazines.  Applicant may change this wording to “magazines featuring [specify type, e.g. computers, travel, general feature, etc.],” if accurate.  TMEP §1402.01.

 

The wording “chalk arts crafts, paint kits” in the identification of goods needs clarification because it is indefinite and appears to be missing punctuation.  Applicant may change this wording to “chalk,” and “arts and craft paint kits,” if accurate.  TMEP §1402.01.

 

The wording “place mats” in the identification of goods needs clarification because applicant must identify the textile.  Applicant may change this wording to “place mats of paper,” if accurate.  TMEP §1402.01.

 

The wording “greetings note, blank and playing cards” in the identification of goods needs clarification because it is indefinite and appears to be missing punctuation, and because “playing cards” are properly classified in International Class 28.  Applicant may change this wording to “greeting cards, note cards, blank cards,” in international Class 16, and “playing cards,” in International Class 28, if accurate.  TMEP §1402.01.

 

Applicant may thus adopt any of the following identifications, if accurate:

 

“photo cassette cases” in International Class 9; and/or

 

“photo albums; scrap books; address books, guest books; preprinted health record keeping books; daily reminder books; autograph books; diaries; photo storage boxes; photo corners; stickers; film cartridge cases made of cardboard; and photo mounting paper; memory books; papers for refill of albums and books; photo mounting papers; envelopes; folders of paper; stationery; writing paper; note paper; note pads; books in the field of [indicate subject matter]; book covers; magazines featuring [indicate topic]; calendars; mounted and unmounted photographs; pens; pencils; pen and pencil cases; erasers; markers; crayons; chalk; arts and craft paint kits; place mats of paper; rubbers stamps; greeting cards; note cards; blank cards;” in International Class 16; and/or

 

“playing cards,” in International Class 28.

 

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 may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Combined 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 based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods 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 not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Disclaimers

 

Applicant must disclaim the descriptive wording “PHOTO ALBUMS MANUFACTURING” apart from the mark as shown because it merely describes applicant’s goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “PHOTO ALBUMS MANUFACTURING” apart from the mark as shown.

 

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

 

 

/Alina Morris/

Examining Attorney

Law Office 105

571-272-5872

 

 

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 has been 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.