UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

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.

 

ISSUE/MAILING DATE: 3/30/2011

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH

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).

 

PRIOR REGISTRATION CLAIM

 

If applicant is the owner of U.S. Registration No. 0431459 and 0379590, then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  See attached. The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 0431459 and 0379590.

 

IDENTIFICATION

 

Applicant applied for the following wording in International Class 16: Printed matter and paper goods, namely, comics, magazines featuring characters from animated films; children's books, magazines featuring characters from animated, action adventure, comedy and drama features, coloring books, children's activity books; stationery, writing paper, envelopes, notebooks, diaries, note cards, greeting cards, trading cards; lithographs; pens, pencils, cases therefor, erasers, crayons, markers, colored pencils, painting sets, decals, heat transfers; posters; mounted photographs and unmounted photographs; book covers, book marks, calendars, gift wrapping paper; paper party favors and paper party decorations, namely, paper napkins, paper doilies, paper place mats, crepe paper, paper hats, invitations, paper table cloths, paper cake decorations; printed transfers for embroidery or fabric appliques; printed patterns for costumes, pajamas, sweatshirts and t-shirts; paper photo frames, coasters for glasses; education; entertainment; film production; sporting and cultural activities

 

Applicant must further clarify the wording listed in the identification because it is indefinite and must be revised to list intended goods by common commercial name or phrasing that clearly identifies the intended goods.  See TMEP §§1402.01, 1402.03.  As written, the wording is broad and could include goods in other international classes. 

 

Following, the examiner highlights the portions of the identification that are unclear in italics followed by suggestions for better terminology (in their appropriate class) below.  The examiner’s suggested language appears in bold. The portions of the identification that are acceptable as originally written are repeated as listed in the application. 

 

Applicant may change this wording to, if accurate: 

 

Printed matter and paper goods, namely, comics, magazines featuring characters from animated films; children's books, magazines featuring characters from animated, action adventure, comedy and drama features, coloring books, children's activity books; stationery, writing paper, envelopes, notebooks, diaries, note cards, greeting cards, trading cards; lithographs; pens, pencils – acceptable in Class 16

 

cases therefor - pen and pencil cases,

 

erasers, crayons, markers, colored pencils – acceptable in Class 16

 

painting sets - Painting sets for artists in Class 2 OR Painting sets for children in Class 16

 

decals – acceptable in Class 16

 

heat transfers - Heat transfer paper in Class 16

 

posters; mounted photographs and unmounted photographs; book covers, book marks, calendars, gift wrapping paper; paper party favors and paper party decorations, namely, paper napkins, paper doilies, paper place mats, crepe paper – acceptable in Class 16

 

paper hat - Paper hats for use as clothing items in Class 25 OR Paper party hats in Class 28

 

invitations – Printed invitations in Class 16

 

paper table cloths, paper cake decorations; printed transfers for embroidery or fabric appliques; printed patterns for costumes, pajamas, sweatshirts and t-shirts – acceptable in Class 16

 

paper photo frames – correctly classified in Class 20

 

coasters for glasses - Coasters of paper in Class 16 OR Coasters not of paper and not being table linen in Class 21 OR Cloth coasters in Class 24

 

education; entertainment – these terms are broad. Applicant must specify the specific activity related with each services for notice and classification purposes.  Applicant may change this wording to, if accurate: 

 

Educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the fields of {indicate subject matter or fields of educational activity} in Class 41

 

Entertainment, namely, a continuing {indicate type, e.g. variety, news, comedy} show broadcast over television, satellite, audio, and video media – in Class 41

 

film production – correctly classified in Class 41

 

sporting and cultural activities - these terms are broad. Applicant must specify the specific

activity related with each services for notice and classification purposes.  Applicant may change this wording to, if accurate: 

 

Organizing community sporting and cultural events – in Class 41

 

Note, if applicant accepts any of the suggested identifications, Applicant must amend the application to classify the goods or services in the listed International Class following the suggested identification.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Identification Manual

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Indefinite Terms

 

Moreover, each identification must be specific and all-inclusive; therefore, applicant should refrain from using open-ended wording such as “including” or “and the like” and replace this wording with "namely" followed by the respective goods or services listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).   The identification must be specific and all-inclusive.

 

Amending Identification/Broadening Scope

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and 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., 1402.07 et seq.

 

MULTIPLE APPLICATION REQUIREMENTS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

UNSIGNED DECLARATION

 

The application was not signed and verified, both of which are application requirements.  See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  Therefore, applicant must verify the statements specified further below in a signed affidavit or declaration under 37 C.F.R. §2.20.  See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and following the instructions within the form for signing.  See 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed and dated by a person authorized under 37 C.F.R. §2.193(e)(1).  See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).

 

STATEMENTS:  The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use the mark in commerce; applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

 

DECLARATION:  The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

PLEASE NOTE:

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

/C. Skye Young/

Trademark Examining Attorney

Law Office 117

Ph: (571) 272-9713

Fx: (571) 273-9117

Em: skye.young@uspto.gov

 

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/teas/eTEASpageD.htm.  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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 3/30/2011 FOR

SERIAL NO. 85214937

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 3/30/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.