Offc Action Outgoing

[Important Email Information]

UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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  78/965203

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search results; status

 

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. §1052(d).  TMEP §704.02.  However, before the application can be approved for publication, applicant must respond to the issues raised below.

 

Disclaimer required

 

Applicant must disclaim the descriptive wording “CLEAR” apart from the mark as shown because it merely describes a property of the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The attached definitions and web advertisements for similar goods show that “clear” is a well recognized term that is often used to describe the ability to see through coatings.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use CLEAR apart from the mark as shown.

 

A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

The examining attorney also notes that in its former application, Application Serial No. 75/692407, to register CLEAR CHOICE for the goods here described, applicant disclaimed CLEAR.

 

If the applicant has any questions, please contact the assigned examining attorney. 

 

Sincerely,

/Melvin T. Axilbund/

 

Melvin T. Axilbund

Examining Attorney, Law Office 113

melvin.axilbund@uspto.gov

571/272-9424

 

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

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 3 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 8 attachments  

1. def-1  

2. def-2  

3. def-3  

4. def-4  

5. def-5  

6. def-6  

7. def2-1  

8. def2-2  

 

Email 2 includes the following 9 attachments  

1. def2-3  

2. def3-1  

3. def3-2  

4. def4-1  

5. def5-1  

6. def5-2  

7. def5-7  

8. webev  

9. webev2-1  

 

Email 3 includes the following 5 attachments  

1. webev2-2  

2. webev3-1  

3. webev3-2  

4. webev4  

5. webev5  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.