UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/716760
APPLICANT: Telet S/A
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CLARO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 871009
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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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.
Serial Number 78/716760
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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.
However, applicant must respond to the following issues.
Applicant must submit an English translation of the mark. 37 C.F.R. §2.61(b); TMEP §809. The following translation statement is suggested: “The English translation of CLARO is CLEAR.” See Exhibit A.
Color Claim and Description Incomplete – Amendment Required
The color claim and color description do not list all the colors appearing in the drawing of the mark. Applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). Specifically, the color gray appears in the border of the red three-dimensional ball and must be claimed and described.
The following color claim and color description are suggested: “The colors gray, red and white are claimed as a feature of the mark. The color red appears in the three dimensional design of a ball containing the text “CLARO,” which appears in white. Three short white lines appear above the “O” in “CLARO.” The color white also appears in the from of two stylized representations of the reflection of light. The color gray appears in the edges of the red ball.” 37 C.F.R. §§2.52(b) and (b)(1); TMEP §§807.07(a)(i) and (a)(ii).
The wording “periphericals and accessories” in the identification of goods and services is unacceptable as indefinite. Applicant must indicate the specific goods. TMEP §§1402.01. Applicant may adopt the following identification, if accurate:
Class 009: “telephone apparatus and telephone peripherals and accessories, namely {indicate specific goods, e.g. telephone headsets}.”
The wording “telecommunication services” in the identification of goods and services is unacceptable as indefinite. Applicant must indicate the specific services provided. TMEP §§1402.01. Applicant may adopt the following identification, if accurate:
Class 009: “telecommunication services, namely {indicate specific services, e.g. telecommunication access services, call hunting, etc.}”
Please note that, while the identification of goods and services may be amended to clarify or limit the goods and services, adding to the goods and services or broadening the scope of the goods and services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and services that are not within the scope of the goods and services set forth in the present identification.
For assistance with identifying and classifying 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.
Applicant May Proceed Solely on Intent-to-Use Basis
If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration. Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01 and 1004.01(b).
/Sean Crowley/
Trademark Attorney
Law Office 116
571.272.8851 (telephone)
571.273.8851 (fax)
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.