UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 12/21/2007

 

EXAMINER'S AMENDMENT

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02.   

 

AMENDMENT: In accordance with the authorization granted by Diane Reed on December 21, 2007, the application has been AMENDED as indicated below.  Please advise the undersigned immediately if there is an objection to the amendment.    Otherwise, no response is necessary. TMEP §707.

 

If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).

 

The identification of services is amended to read as follows: 

Class 035:  “Business services, namely, business consultation services and business management services”;

Class 041:  “Educational and training services, namely, consulting seminars, workshops and one-on-one training in the fields of business management and business operations and distribution of course material in connection therewith”;

TMEP §1402.01(e).

 

PRIORITY ACTION

 

 

DISCLAIMER

 

The applicant must disclaim the descriptive word “METHODS” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording merely describes the nature or subject matter of the applicant’s services.  Specifically, the term is descriptive of a feature and characteristic of applicant’s business consultation, training and education services.

 

In further support of this requirement, the examining attorney attaches third-party registrations obtained from the USPTO X-Search database.  The registrations all have disclaimers of the descriptive term, “METHODS”, for similar services.

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “METHODS” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

 

 

 

 The applicant is encouraged to telephone the examining attorney listed below to amend the application in accordance with the requirement above via examiner’s amendment, to expedite the application to publication.

 

 

 

 

/Kelly McCoy/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-8976

Fax - (571) 273-8976

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.uspto.gov/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.