UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79091486
MARK: BIOGUARD
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CORRESPONDENT ADDRESS: F-75002 PARIS |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: ARJOWIGGINS SECURITY
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
INTERNATIONAL REGISTRATION NO. 1062284
This is a PROVISIONAL FULL REFUSAL of the trademark in the above-referenced U.S. application. See 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 if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
DESIGNATION OF DOMESTIC REPRESENTATIVE:
The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/teas/index.html.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The referenced application has been reviewed by the assigned trademark examining attorney.
NO CONFLICTING MARKS FOUND
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES WHICH APPLICANT MUST ADDRESS
Applicant must respond timely and completely to the following issue(s):
15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
COUNTRY OF INCORPORATION REQUIRED
CLAIM OF OWNERSHIP OF PRIOR REGISTRATION REQUIRED
Applicant is the owner of U.S. Registration No. 3070040.
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the word “BIOGUARD” followed by a check mark.
IDENTIFICATION OF GOODS MUST BE AMENDED
Applicant submitted the following identification of goods in the application:
“Printable paper or cardboard; safety paper; safety paper for bank notes; safety paper for fiduciary documents” in International Class 016; and
“Printable plastic safety film or sheets; plastic safety film or sheets for bank notes; plastic safety film or sheets for fiduciary documents” in International Class 017.
The wording “safety paper; safety paper for bank notes; safety paper for fiduciary documents” in Class 016 is acceptable as submitted.
However, the wording “Printable paper or cardboard” in Class 016 and “Printable plastic safety film or sheets; plastic safety film or sheets for bank notes; plastic safety film or sheets for fiduciary documents” in Class 017 is indefinite because it contains the word “or.” In this case, the word “or” is not sufficiently explicit language because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods. See TMEP §1402.03(a). Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language, as shown in the amended identification of goods provided below.
In addition, the wording “Printable plastic safety film or sheets; plastic safety film or sheets for bank notes; plastic safety film or sheets for fiduciary documents” in Class 017 is indefinite and must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. Therefore, for the goods to be properly classified in Class 017, applicant must amend the identification to specify that the goods are “semi-finished,” “for use in manufacturing,” or/or “for commercial and industrial use.”
Amended Identification of Goods
For applicant’s convenience, following is an amended version of applicant’s identification of goods that complies with the above-mentioned clarification requirements. Material additions and alterations are shown in bold type. Applicant must complete one of the amended identifications by inserting wording where the space appears, as directed below.
Applicant may adopt the following amended identification, if accurate:
Class 016: Printable paper and cardboard; safety paper; safety paper for bank notes; safety paper for fiduciary documents
Class 017: Printable plastic safety film and sheets for _________ [applicant must specify the use of film and sheets, e.g., “for use in the manufacture of bank notes and fiduciary documents” or “for commercial and industrial use”]; plastic safety film and sheets for use in the manufacture of bank notes; plastic safety film and sheets for use in the manufacture of fiduciary documents
Identification Manual Available Online
For further assistance with identifying and classifying the goods, applicant is encouraged to consult the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Scope of Wording Cannot be Broadened and Classification Cannot be Changed
An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §1402.06 et seq. In addition, for applications filed under Trademark Act Section 66(a), the international classification of the goods and/or services cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d);TMEP §§1401.03(d), 1904.02(b).
RESPONSE GUIDELINES
If applicant does not respond to this Office Action within six months of the issue/mailing date, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. If the application abandons for failure to respond to the Office Action, applicant’s only option would be to file a timely petition to revive, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Kristin Carlson/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 105
Tel: 571-272-2240
kristin.carlson@uspto.gov
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.