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  79/016267

 

INTERNATIONAL REGISTRATION NO. 0864657  

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:

 

(1)   Attorneys in good standing with the bar of any U.S. federal court or the highest court of any U.S. state, and

 

(2)   Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). 

 

37 C.F.R. §10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney will be considered an incomplete response.  TMEP §§602, 602.03, 603.05.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

SEARCH OF THE RECORDS

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.

 

ENTITY and NATIONAL CITIZENSHIP - OMITTED and/or NEED CLARIFICATION

Applicant must clarify its entity type because the entity is omitted.  In this case, there appears to be the names of three individuals listed as the applicant.  If the three named applicants own the mark jointly, they must state that they are joint applicants.  In that case, the entity should be identified as “joint applicants.”  Then, the applicant must also identify the national citizenship of each of the three joint applicants.  TMEP §803.03(d). 

 

If the application was filed in the name of the wrong party, then this application is considered void.  In such a case, the true owner may refile a new application for the mark, with a new filing fee.  TMEP §803.06.

 

IDENTIFICATION OF GOODS

The wording in the identification of goods is unacceptable as written.  Parentheses are not allowed in the identification of goods and should be DELETED.  The wording in the parentheses should be deleted or re-worded.  Also, some of the wording is indefinite and needs further clarification.  See requirements below in bold.  TMEP §1402.01.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 20:  Benches; chests of drawers; display counters; tables; display showcases; picture frames; [The wording “handicrafts woven with grass fiber (except shoes, hats and mats)” is not acceptable as written.  The precise nature of the goods is unclear.  The applicant must identify all the goods using common commercial names, e.g. “chair pads woven with grass fiber”]; [The wording “handicrafts woven with cane fiber (except shoes, hats and mats)” is not acceptable as written.  The precise nature of the goods is not clear from the present wording.  IDENTIFY the goods using common commercial names, e.g. “chairs woven with cane fiber”]; resin art ware, namely, [IDENTIFY the goods using common commercial names as the wording “resin art ware” is indefinite, e.g. “cold cast resin figurines,” “figures of resin,” “statues of resin”]; statuettes of resin [DELETE the wording “all the aforesaid goods included in this class” as only the goods themselves should be listed.]

 

TMEP §§1402.01 and 1402.03.

 

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

 

 

 

/tmg/

Tonja M. Gaskins

Trademark Attorney

Law Office 112

(571) 272-9406

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.