Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

NOTICE OF INCOMPLETE DIVISIONAL REQUEST

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID THE DENIAL OF YOUR REQUEST TO DIVIDE THE APPLICATION, WE MUST RECEIVE A PROPER RESPONSE TO THIS NOTICE WITHIN THIRTY (30) DAYS OF THE ISSUE/MAILING DATE. 

ISSUE/MAILING DATE: 3/11/2016

U.S. Serial Number  86586456

The proposed request to divide the application pursuant to 37 C.F.R. §2.87 filed on January 21, 2016, cannot be accepted, because it identifies goods and/or services that are outside the scope of the goods and/or services identified in the notice of allowance.  Specifically, the wording “Trucks, Trailers, Shirts, Sweatshirts, Coats, Hats, Business cards, door hangers, Invoices, Envelopes”   is beyond the scope of the goods and/or services identified in the notice of allowance.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. and 1402.07. 

A request to divide a Section 1(b) intent-to-use application may be filed when some but not all of the goods and/or services stated in the notice of allowance are in use in commerce and a statement of use has been filed for those goods and/or services.  37 C.F.R. §2.88(c); TMEP §1110.01.  The goods and/or services that are in use in commerce are then divided into a new application, such that the new application will contain those goods and/or services that are in use in commerce and proceed toward registration.  The existing application will contain those goods and/or services that will remain as Section 1(b) intent-to-use and for which a statement of use will be required in due course.

In the present case, a statement of use was filed on January 21, 2016, for all the goods and/or services stated in the notice of allowance.  As a result, no goods and/or services remain that are not yet in use in commerce and for which a statement of use is required.  Therefore, applicant must clarify the reason for filing the request to divide or intends for the Office to process the request to divide, applicant has thirty (30) days from the issuance date of this letter to respond to this letter.

Please call the undersigned with any questions.

/Lynette Patterson/

Paralegal Specialist

Office of Trademark Services

ITU/Divisional Unit

Phone - (571) 272-9507

lynette.patterson@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Intent-to-Use (ITU)/Divisional Unit Office action form number 8 at 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. 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 (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.  If an applicant is represented by an attorney, the attorney must sign the response. 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

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 Status and Document Retrieval (TSDR) at http://tsdr.gov.uspto.report/.  Please keep a copy of the complete status screen.  If TSDR 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/trademarks/teas/correspondence.jsp.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.