UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing  date, this case will be given priority handling.  TMEP §708.01.

 

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.

 

OFFICE RECORDS SEARCH:  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.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number  78/920242

 

The following were discussed in communication with Renee C. Barthel, Esq. ((312) 236-8500) on October 26, 2006.  The applicant must respond to each requirement raised below.

 

Identification & Classification of Goods

The identification of goods is unacceptable as indefinite because the true nature of a portion of the goods is indefinite, and some of the goods are improperly classified. Accordingly, the applicant should adopt the following identification and classification, if accurate, TMEP §1402.01; 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b):

 

            “Personal watercraft, namely, kayaks, canoes, pedal boats and water bikes,” in International Class 12.

 

            “Hammocks for use in water,” in International Class 22.

 

            “Trampolines for use in water,” in International Class 28.

 

 

 

For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at http://tess2.gov.uspto.report/netahtml/tidm.html.  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.

 

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 that are not within the scope of goods set forth in the present identification.

Additional International Classes

As discussed above, the application identifies goods that are classified in three (3) international classes.  Therefore, the applicant must either restrict the application to the one (1) class covered by the fee already paid, or if the applicant prosecutes this application as a combined, or multiple-class application, then the 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)   The applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   The applicant must submit a filing fee for each international class of goods and/or services 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.

 

Drawing Issues

 

Mark Contains Gray:  The applicant has submitted a drawing showing the mark in the color gray, along with black and/or white, but has not specified whether gray is meant to be a color in the mark or the mark is intended to be represented in black and white.  There are only two options for presenting the mark:  (1) color drawings, and (2) black and white drawings.  The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required.  37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e). 

 

(1)   If gray is not considered a color or a feature of the mark, applicant must submit the following statement:  “The mark is not in color.” 

 

(2)   If gray is considered a color and is a feature of the mark, applicant must submit a color claim and description for all the colors in the mark, including black and white.  The following format is suggested:  “The colors gray and/or black and/or white are claimed as a feature of the mark.  The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element as appropriate].”

 

 

Description of the Mark is Unnecessary:  The applicant’s description of the mark will not be printed on any registration that may issue from this application.  TMEP §808.03.  The description is unnecessary because the mark is composed of easily recognized letters, numerals, designs, or figurative elements.  TMEP §§808.01(a) and 808.01(b). 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

Fax: (571) 273-9106

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

·            ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.

·            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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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