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  78/556816

 

The following issues were discussed in communication with Elizabeth Nunn on behalf of Alan Blum on 4/11/05.   Applicant’s attorney has agreed to comply with the stated requirements as follows.

 

I.          Prior Pending Applications

 

The examining attorney has discovered two prior pending applications that may conflict with the applicant’s mark.  The examining attorney encloses information regarding pending Application Serial Nos. 78533714 and 78512817. 37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the marks in the above noted applications under Section 2(d) of the Act.  The effective filing dates of the referenced applications precede the applicant's filing date.  If the earlier‑filed applications mature into a registration, the examining attorney may refuse registration under Section 2(d).  Upon entry of a response to this office action, the examining attorney may suspend further action on your application pending the outcome of the referenced applications.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, 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.

 

ADVISORY:

 

If the marks in the prior pending applications have been assigned to applicant, then applicant must prove ownership of those marks.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.01.

 

II.        Claim of Ownership of Prior Registrations

 

Applicant will submit the following claim of ownership for the record:

 

            Applicant is the owner of U.S. Registration Nos. 1437972, 1833935, 2393477, and others.

 

37 C.F.R. §2.36; TMEP §812.

 

III.            Identification of Goods

 

Applicant will adopt the following identification of goods:  “Electronic games pertaining to sports, namely, backboards for basketball; ride-on toys” in International Class 28.  TMEP §1402.01.

 

The applicant may also refer to The Trademark Acceptable Identification of Goods and Services Manual at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual for guidance.  The Trademark Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.  TMEP sec. 804.04.

 

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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

If the applicant has any questions regarding this Priority Action, please telephone the assigned examining attorney. 

 

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.

 

 

 

/Lana H. Pham/

Trademark Attorney

Law Office 115

(571) 272-9478

Lana.Pham@uspto.gov

 

 

 

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