UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/381232

 

This letter responds to applicant’s communication filed on August 31, 2005.

 

For the reasons set forth below, the Final requirement for an amended Class 016 identification of goods is continued:

Identification of Goods – Class 016 Goods - FINAL

 

In the response filed on August 31, 2005, the proposed wording “point of sale mobiles, point of sale contracts, printed inserts for newspapers” in the Class 016 identification of goods needs clarification because it is overly broad, and the particular type of goods must specified.

 

The wording “point of sale mobiles” is overly broad, and these goods are misclassified.  Decorative mobiles are in Class 020, and toy mobiles are in Class 028.   The applicant must specify the particular type of goods and re-classify the goods, or delete them from the identification.

 

Also, the wording “point of sale contracts” is ambiguous.  The applicant may use the substitute wording “point of sale printed forms in the nature of contracts” to clarify that these goods are actually printed forms.

 

Last, the wording “printed inserts” is overly broad, and the applicant must clarify the type of goods – for example, are these inserts “columns” or “sections”?

 

The applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name for the products, the applicant must describe the products and their intended uses.  TMEP §1402.01.

 

The applicant may adopt the following identification of goods, if accurate: 

 

“printed matter, namely, brochures, manuals, newsletters, printed instructional, educational and teaching materials, and printed visuals in the nature of promotional material, point of sale posters, point of sale printed forms in the nature of contracts, printed [indicate type of inserts, e.g., columns, sections] for newspapers, magazines and pamphlets, printed advertisements for newspapers and magazines, and advertising posters and leaflets, all in the fields of hair pieces, wigs, false hair, hair fasteners, hair nets, hairdressing and styling services and services in connection with fixing hair pieces to the heads of human beings, in International Class 016.”

 

“promotional and marketing material, namely, point of sale decorative mobiles, in International Class 020.”

 

“promotional and marketing material, namely, point of sale toy mobiles, in International Class 028.”

 

TMEP §1402.01.

 

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

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services recited in the present identification.

 

This requirement remains FINAL.

Additional Classes

 

The application identifies goods that are classified in more than two (2) international classes.

 

Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

Column, Feature or Section of a Publication – Advisory

 

In view of the nature of the proposed mark, the applicant is advised that, upon consideration of an amendment to allege use or statement of use, registration may be refused under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the proposed mark identifies only a portion of the applicant's publication.  Periodically issued portions of the applicant’s publication, such as columns or features not promoted as separate articles of commerce, are integral elements of the complete publication and are not considered separate goods in trade.  TMEP §§1202.07 et seq.

Proper Response to Final Action

 

If applicant does not respond within six months of the mailing date of this final action, then the following class to which the final requirement applies will be deleted from the application:  Class 016 goods.  The application will proceed forward for the remaining Class 026 goods.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Andrew Rhim/

Attorney-Adviser

Law Office 101

phone (571) 272-9711

fax (571) 273-9101

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.uspto.gov/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.uspto.gov/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.