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: 6/16/2011

 

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, 2.65(a); TMEP §§711, 718.03.

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “DIGITAL MASTER” and “PORTRAIT SCULPTURE” apart from the mark as shown because “DIGITAL MASTER” is a term-of-art in the photography field that refers to “a document, photograph, recording etc from which copies are made”.  See attached Macmillan dictionary evidence.  The wording “PORTRAIT SCULPTURE” refers to the fact that applicant’s three-dimensional sculpture images are derived from the portrait of an individual, as discussed in applicant’s specimen.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  Therefore, these terms are generic and must be disclaimed.

 

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  TMEP §§1213, 1213.10.

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03.

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

The following is the accepted format for a disclaimer:

 

No claim is made to the exclusive right to use “DIGITAL MASTER” and “PORTRAIT SCULPTURE” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

 

AMENDMENT TO IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services is indefinite and must be clarified.  See TMEP §1402.01.  First, the goods and services in the identification fall in multiple classes.  Therefore, applicant should review the multiple class application requirements outlined below and classify the goods and services accordingly.  Secondly, applicant must amend those goods and/or services that are unclear, as outlined below.

 

The goods “Sports-themed statues and figurines made of cold cast resin” fall in Class 20.

 

The goods “Sports-themed modeled plastic toy figurines” fall in Class 28.

 

The wording “Photographic computer imaging for others, namely, three-dimensional imaging, scanning and non-medical body scanning services for others” must be amended clarify the type of services that are intended, as the prefatory language, “PHOTOGRAPHIC COMPUTER IMAGING FOR OTHERS” falls in Class 41, whereas photo scanning services and electronic scanning of photographic images, artwork, etc., falls in Class 42.  Applicant must specify which service is intended and classify the services accordingly.

 

The services “Photography services for others; portrait photography services” fall in Class 41.

 

The wording “Digital imaging services, namely, non-medical three-dimensional digital imaging of the human body for others” falls in Class 41. Please note that “non-medical, ultrasound imaging services” fall in Class 42.  Therefore, to the extent that applicant’s services involve ultrasound technology, this would be a Class 42 service, and applicant must delete the prefatory language and retain only the services identified after the word “namely.”

 

The services “Non-medical three-dimensional digital photography services for others” fall in Class 41.  

 

The services “Licensing of three-dimensional photographic images” fall in Class 45, if applicant is providing legal services.  On the other hand, if applicant is leasing the reproduction rights to stock photos, then the following description may be accurate: “Stock photography services, namely, leasing reproduction rights of three-dimensional photographic images [in Class 45].”

 

Identifications of goods and/or services can be amended 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., 1402.07.  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.

 

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.

 

 

Multiple Class Application Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

a.   Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

b.   One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

c.   A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

d.   Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The specimen of record is acceptable for International Class 41 only.

 

 

CLAIM OF PRIOR REGISTRATIONS REQUIRED

 

If applicant is the owner of U.S. Registration Nos. 3715638, 3854324, 3835687, and 3854321, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 3715638, 3854324, 3835687, and others.

 

 

If there are questions regarding this action or the application in general, the undersigned examining attorney can be contacted at the telephone number below.

 

 

 

 

/ses/

Shaila E. Settles

Trademark Examining Attorney

Law Office 114

(571) 270.1527 (t)

(571) 270-2527 (f)

shaila.settles@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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 trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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 6/16/2011 FOR

SERIAL NO. 85268118

 

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 6/16/2011 (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.