To: | Pacific Connections of California, Inc. (diane.lambillotte@bingham.com) |
Subject: | TRADEMARK APPLICATION NO. 78814571 - TESS - 7/158 |
Sent: | 7/29/2006 7:24:41 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/814571
APPLICANT: Pacific Connections of California, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 7/158
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 78/814571
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Potential Refusal under Section 2(d)
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78739110. 37 C.F.R. §2.83.
There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).
Identification of Goods in Class 025
The current wording used to describe the goods needs clarification because the applicant must specify the clothing items by their common commercial names. Applicant may adopt the following identification of goods, if accurate: “clothing, namely, shirts and pants”, in Class 025 TMEP §1402.01.
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.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identification of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual
Specimen
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §§904.01 et seq. and 904.09.
The current specimen of record comprises a photocopy of the mark and is unacceptable as evidence of actual trademark use because the photocopy does not make the connection between the mark and the goods clear. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
Amending Basis (Advisory)
If applicant cannot comply with the specimen requirement for the Section 1(a) Use basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, applicant may wish to amend the application to assert a Section 1(b) Intent-To-Use basis.
Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
Trademark Act Section 1(b), 15 U.S.C. § 1051(b). This statement must be verified with an affidavit or a signed declaration under 37 C.F.R, §2.20. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.
If applicant amends the application to assert Trademark Act Section 1(b) as a basis for registration, then applicant must file an allegation of use in commerce prior to registration, i.e., an amendment to allege use under Trademark Act Section 1(c), 15 U.S.C. §1051(c), or a statement of use under Trademark Act Section 1(d), 15 U.S.C. §1051(d). 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b) and 1103.
/Ernest Shosho/
Trademark Attorney
Law Office 117
571-272-9705
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.