To: | Callbox, LLC (psupnik@rufuslaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86205839 - BURN - 2713-11 |
Sent: | 8/6/2014 10:02:46 AM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86205839
MARK: BURN
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CORRESPONDENT ADDRESS: PAUL D. SUPNIK RUFUS-ISSACS, ACLAND & GRANTHAM, LLP 232 N CANON DR |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Callbox, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 8/6/2014
Upon review of this application by reviewer’s from the Commissioner’s Office, errors in the classification of some goods in International Class 025 and some goods in the identification of goods in International Class 009 were noted. Accordingly, the following requirement(s) regarding the classification and identification must be made. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
Summary of Issues Applicant Must Address
Requirement – Classification
Applicant has classified “belt buckles” in International Class 025; however, the proper classification is International Class 026. Therefore, applicant must either (1) add International Class 026 to the application and reclassify these goods and/or services in the proper international class, or (2) delete the wording “belt buckles” from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Requirement - Identification of Goods and/or Services
The wording “Blu-Ray Discs” in the identification of goods is a registered mark not owned by applicant. See enclosed copy of U.S. Registration No(s). 2901104. An applicant may not use a registered mark owned by another party in the identification. A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant. TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).
Therefore, applicant must amend the identification of goods to delete the wording “Blu-Ray discs” and substitute the common commercial or generic name of the goods.
NOTE: The remaining goods and/or services recited in the identification are acceptable without further amendment.
Applicant may adopt the following identification, if accurate. Please note that the wording subject to this requirement and the suggested changes made by the trademark examining attorney appear in bold.
DVD's, digital video, optical and magnetic discs, compact discs, cinematographic and television films, and digital downloads featuring entertainment and documentaries relating to firefighting and an ongoing series pertaining to firefighting; hardhats, protective helmets; video game software (Class 009)
Posters, stickers and decals, and nonfiction books on the subject of firefighting; fiction books featuring firefighters and firefighting, souvenir program books on the subject of firefighting (Class 016)
Apparel, namely, T-shirts, sweatshirts, jackets, caps, pants; footwear (Class 025)
Belt buckles (Class 026)
Entertainment services, namely, an ongoing series on the subject of firefighting provided through television, webcasts; entertainment, namely, film and video production services; provision of entertainment in the nature of stage shows and theater productions (Class 041)
If applicant needs to add an additional class to the application as a result of this requirement, please see the multi-class requirements detailed below.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
NOTICE: Although identifications of goods and/or services may be amended 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.
Multi-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Assistance
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
Deirdre G. Robertson
/Deirdre G Robertson/
Trademark Examining Attorney
Law Office 111
Phone No. (571) 272-8806
deirdre.robertson@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.
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.