| To: | Cosmoda Concept Corporation (mark@franchiselawcanada.com) |
| Subject: | TRADEMARK APPLICATION NO. 78979519 - PRIORITY - COSCO-US-001 |
| Sent: | 12/7/07 8:46:26 AM |
| Sent As: | ECOM105@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/979519
MARK: PRIORITY
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CORRESPONDENT ADDRESS: MARKUS COHEN, Q.C.; MARKUS COHEN LAW OFF |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Cosmoda Concept Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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NOTICE OF SUSPENSION
ISSUE/MAILING DATE: 12/7/2007
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. The Office will conduct periodic status checks to determine if suspension remains appropriate.
Action on this application is suspended pending the disposition of:
- Application Serial No(s). 78743880 and 78962371
Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP §§1208 et seq. A copy of information relevant to this pending application(s) was sent previously.
Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension. TMEP §716.03. Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue. If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
Action on this application is also 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 U.S. application, which is based on a foreign registration pursuant to 15 U.S.C. §1126(e), contains a standard character claim. However, because the foreign registration has not yet been submitted, the record is unclear as to whether the foreign registration includes this claim. The mark in the U.S. application must be a substantially exact representation of the mark in the foreign registration; thus, they must both include a standard character claim. See 37 C.F.R. §2.52; TMEP §§807.03(f) and 1011.01.
Upon receipt of the foreign registration certificate, if it does not indicate that the mark is in standard characters, applicant will be required to (1) submit the following statement in the U.S. application: “Under the law of the country of origin, the foreign application or registration includes a standard character claim or the equivalent,” or (2) delete the standard character claim from the U.S. application.
The following refusal(s)/requirement(s) is/are continued and maintained:
1. Trademark Act Section 2(d) Refusals to Register:
a. U.S. Registration No. 2776935 for the International Class 014 goods. Although applicant stated that it intended to file cancellation proceedings against this mark, until such proceedings have actually been filed and applicant can provide the cancellation proceedings file number, the examining attorney does not have any authority to suspend action pending applicant’s prosecution intentions.
b. U.S. Registration No. 1467470 for the International Class 025 goods. The examining attorney has considered applicant’s arguments but has found them unpersuasive. The dominant feature in the mark PRIORITY MALE in which the wording PRIORITY is the initial word and the wording MALE is disclaimed remains PRIORITY. As such, the mark is confusingly similar to applicant’s mark PRIORITY.
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
As stated in the January 19, 2007 Office Action, “Security money holders” must be clarified as “money belts” in order to remain in International Class 025; otherwise, “money clips” are in International Class 016 and “money boxes of metal” are in International Class 006.
Applicant may thus adopt any or all of the following identification, if accurate:
“Security money holders, namely, money boxes of metal” in International Class 006
“watches and clocks” in International Class 014 [no change]
“passport wallets; Security money holders, namely, money clips” in International Class 016
“sport bags” in International Class 018 [no change]
“underwear, pants, jackets, parkas, hats, scarves, security money holders, namely, money belts” in International Class 025
Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services. Identifications are examined in accordance with Rules of Practice and USPTO policies and procedures in effect on the application filing date. TMEP §1402.14. However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.
Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. Id.
For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm/html, which is continually updated in accordance with prevailing rules and policies. See TMEP §§702.03(a)(iv) and 1402.04.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or 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/or services that are not within the scope of the goods and/or services set forth in the present identification.
In light of applicant’s inclusion of a variety of goods in different classes in the recitation, applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods that are classified in more than four (4) international classes, however applicant paid the fee for only four (4) classes.
Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
If applicant decides to add the appropriate International Class to the application, then in addition to paying the appropriate fee, the applicant must clarify the wording in the identification of goods/services as set forth above.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
The following refusal(s)/requirement(s) is/are withdrawn:
Trademark Act Section 2(d): The Office records indicate that U.S. Registration No. 2365270 was cancelled on April 7, 2007 and as such, the Trademark Act Section 2(d) refusal is hereby withdrawn.
Identification of Goods: In light of applicant’s amendment to add “passport wallets” in International Class 016, the related requirement is hereby withdrawn.
/Tasneem Hussain/
Trademark Examining Attorney
Law Office 105
(571) 272-8273
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.