Offc Action Outgoing

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:

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.

NO LIKELIHOOD OF CONFUSION

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.

IDENTIFICATION OF GOODS AND SERVICES

Applicant must amend the identification of goods and services.

The following wording in International Class 16 is acceptable as written: stationery; writing pads; pencils, pens, and pencil holders.

The following wording in International Class 36 is acceptable as written: Banking; credit card services; exchanging money; financing services; cheque verification; issuing travelers cheques.

The remaining wording in the identification of goods and services is indefinite and must be clarified because it does not clearly and adequately describe the exact nature of the goods and services intended. See TMEP §1402.01. Applicant must clarify the exact goods and services intended by their common commercial names.

Applicant may substitute the following wording, if accurate:

“Paper, cardboard and goods made from these materials, not included in other classes, namely, {specify exact goods intended by their common commercial names, e.g., bond paper, copier paper, graph paper, note paper, cardboard}; brochures about {indicate subject matter}; catalogues in the field of {indicate specific field of use}; leaflets about {indicate subject matter}; magazines in the field of {specify subject matter}; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of {indicate subject matter, e.g., real estate sales}; printed periodicals in the field of {indicate subject matter}; printed matters, namely, {specify exact goods intended by their common commercial names, e.g., paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of {indicate subject matter}}; paper articles, namely, written articles in the field of {indicate subject matter}; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, {specify exact goods intended by their common commercial names, e.g., blank forms, business forms, and order forms}; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holders” in International Class 16.

“Banking; credit card services; financial evaluation, namely, {specify exact services intended by their common commercial names, e.g., financial evaluation for insurance purposes, financial evaluation of standing timber, financial evaluation of wool}; exchanging money; financing services; investments, namely, {specify exact services intended by their common commercial names, e.g., investment brokerage, investment management, investment of funds of others}; insurance, namely, {specify exact services intended by their common commercial names, e.g., insurance agency and brokerage, insurance administration, insurance claims processing}; guarantees, namely, {specify exact services intended by their common commercial names, e.g., cheque guarantee card services, financial guarantee and surety services}; cheque verification; issuing travelers cheques” in International Class 36.

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.

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 following for those goods and/or services based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

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

(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).

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

FEES

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; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

APPLICATION UNDER SECTION 1(b) AND 44(d)

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must provide a written statement to that effect. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04.; or

(2) If applicant intends to rely solely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must submit a written statement that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04. Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.

Please note the following additional information.

POSSIBLE ORNAMENTAL REFUSAL: INTENT TO USE APPLICATION

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is merely ornamental, and as such does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987);TMEP §§904.07(b), 1202.03 et seq.

The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature: the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods and/or services, promotion of the applied-for mark as a trademark, and the practice of the relevant trade. See In re Todd Co., 290 F.2d 597, 129 USPQ 408 (C.C.P.A. 1961); In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579 (TTAB 1976); TMEP §§1202.03 et seq.

QUESTIONS

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

/Marcie R. Frum Milone/

Trademark Examining Attorney

Law Office 116

571-272-9726

Marcie.Milone@uspto.gov

(email for informal communications only)

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.