Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   78/642570      

 

NOTICE OF SUSPENSION

 

SUSPENSION PROCEDURE:  This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  37 C.F.R. §2.67.  However, the examining attorney will conduct periodic status checks and may issue inquiries at 6 month intervals from the mailing date of this notice.  TMEP §716.05.  If a status inquiry Office action issues, applicant will have 6 months from the mailing or e-mailing date of the status inquiry to respond.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

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).  TMEP §704.02.

 

Action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant's country of origin.  If the registration is in a foreign language, an English translation must also be submitted.  15 U.S.C. §1126(e); 37 C.F.R. §§2.34(a)(3)(ii); TMEP §§716.02(b), 1004 et seq.  Please note that applicant must notify the examining attorney if the foreign application abandons.

 

The following requirements are maintained and continued

 

Foreign Registration Not From Country of Origin – §44(d)

If applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, then applicant must provide evidence that the European Community is a “country of origin,” i.e., that applicant has a bona fide and effective industrial or commercial establishment in a country within the European Community.  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04.

The application record shows that applicant is domiciled in the United States, but the foreign application on which applicant relies for priority was filed in the European Community.  To obtain a priority filing date under §44(d), the foreign application does not have to be filed in applicant’s country of origin.  However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which applicant relies for priority, applicant must establish that the country in which the application was filed is its country of origin, i.e., that applicant has a bona fide and effective industrial or commercial establishment in that country.

If applicant cannot establish that the country in which the foreign application was filed is the applicant’s country of origin, registration under §44(e) will be refused.  In such case, applicant may amend the application to rely on §1(a) or §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  Where an applicant meets the requirements of §44(d) as of the filing date of the United States application, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(b)(4); TMEP §806.04(b).

Please note that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03.

Disclaimers

Applicant must disclaim the descriptive wording “MASTERS” apart from the mark as shown because it merely describes a feature of the goods and services.  In respect to the goods, the term indicates “a computer which controls another computer or peripheral” and therefore describes the applicant’s software and hardware.  See definition attached to the first Office Action dated February 6, 2006 from www.computeruser.com/resources/dictionary/definition.html?lookup=3551.  As to the applicant’s services, MASTERS means “An expert: a master of three languages[1]” and thus indicates that those conducting the trade shows and teaching classes are experts in the specific fields taught or exhibited. 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 “MASTERS” apart from the mark as shown.

 

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

 

Identification of Goods

 

The wording “consumer electronic devices” in the identification of goods needs clarification because it is overly broad and could include any number of electronic devices such as computers, global positioning devices and other similar goods.  Applicant may change this wording to specify the nature of the device by its common commercial name.  TMEP §1402.01.

 

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.

 

For your assistance and convenience, the “Acceptable Identifications of Goods and Services Manual” may be searched at the Office’s global network computer website address of  http://www.gov.uspto.report/web/menu/tm.html.

 

The applicant should note that its amendment to the identification in Class 9, with the exception of the requirement above, is acceptable, as is the amendment to the identification in Classes 35 and 41.  The applicant’s claim of ownership of prior registrations is also acceptable.

 

 

 

/Susan C. Hayash/

Trademark Senior Attorney

Law Office 107

(571)272-9362 (phone)

(571)273-9107 (fax)