Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/017224

 

The Office has reassigned this application to the undersigned examining attorney.

 

 

Likelihood of Confusion

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1125975 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  Upon further consideration by the examining attorney, the §2(d) refusal is hereby withdrawn.

 

 

Potential Likelihood of Confusion

 

Applicant was made aware of Application Serial Nos. 75/395925 and 75/794136,[1] either of which, if subsequently approved for registration, could result in a possible registration refusal of applicant’s mark under Trademark Act Section 2(d).  Upon further consideration by the examining attorney, the potential §2(d) refusals are hereby withdrawn.

 

 

Identification of Goods

 

The identification of goods for Class 9 remains unacceptable as indefinite.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate: 

 

Class 9 – Electric and electronic controls and regulators for automation production machines, assembly machines and handling machines; computer programs for operating control and regulating devices, namely, application software for automating production machines, assembling machines and handling machines.

 

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://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

The identification of goods for Class 7 is acceptable as currently worded.

 

 

Informational

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.  Additionally, the fee for amending an existing application to add an additional class or classes of goods/services is $335.00 per class for classes added on or after January 1, 2003.

 

Whether applicant chooses to respond via regular mail or electronic mail, applicant should submit its response using only one of these means of communication.  Duplicate responses will delay the prosecution of the application.

 

Applicants may now file requests to change the correspondence address electronically on up to 20 applications at one time.  The Office encourages applicants to use this time-saving form, available online at:  http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (3rd ed., Rev. 2, May 2003), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

 

 

/Matthew J. Pappas/

Trademark Attorney

Law Office 105

703/308-9105 x206

matthew.pappas@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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