UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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  76/122283

 

OFFICE ACTION

 

This letter responds to the applicant’s communication filed on March 15, 2005.  Please note that all issues not discussed in this office action have been resolved.

 

Copy of the Foreign Registration is Required

 

The applicant must submit a copy of the foreign registration to satisfy the requirement of Trademark Act Section 44(e).  15 U.S.C. §1126(e).  If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

The application does not presently contain a copy of the foreign registration.  The applicant submitted an entry from the Israel Trademark Office’s electronic database, but has not submitted a copy of the registration as is required.  An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration or a registered extension of protection of an international registration from the applicant’s country of origin.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin.  TMEP §§1004 et seq. and 1016.

 

Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

 

Refusal:  Goods in Foreign Registration and US Application Differ

 

Registration is refused because the identification of goods in the U.S. application designates goods that are completely different from, and thus broader in scope than, the identification set forth in the foreign application or registration.  15 U.S.C. §1126(e); 37 C.F.R. §2.32(a)(6).  The identification in the U.S. application cannot be amended to correspond to the foreign application or registration because such an amendment would impermissibly broaden the goods in the U.S. application.  37 C.F.R. §2.71(a).

 

Specifically, the goods in the U.S. application are “piezoelectric motors.”  The goods in the foreign registration are “AC and DC motors.”  These items are different types of motors and are therefore different goods. 

 

The applicant may not respond to this refusal by reasserting its Section 1(b) filing basis because no statement of use or proper extension request (no further extension requests could be filed for this application at the time of filing the petition to amend the filing basis) was filed at the time of filing the petition.  See TMEP §806.03(j)(ii).

 

Although the trademark examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Responding to this Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(571) 272-9441

LO Fax (571) 273-9113

 

 

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.gov.uspto.report/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.gov.uspto.report/external/portal/tow.

 

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

 

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