UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/258044
APPLICANT: E-TEC POWER INTERNATIONAL LIMITED
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: E-TEC
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CORRESPONDENT’S REFERENCE/DOCKET NO: 6450-3
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/258044
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) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm
This letter responds to the applicant’s communication filed on 8/29/06.
Recitation of Services and Foreign Registration differ
The following wording in the identification of goods and/or services in the application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration: ALL OF CLASS 42 and in Class 37 CONSTRUCTION PROJECT MANAGEMENT FOR…. 37 C.F.R. §2.32(a)(6). Applicant must therefore do one of the following:
(1) amend the identification of goods and/or services in the application to correspond to the goods and/or services identified in the foreign application or registration; or
(2) delete the Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and rely solely on the Section 1(b) Intent to Use basis for those goods and/or services.
15 U.S.C. §1051(b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972).
Class 37 should be amended to replace “construction project management for…” with “Custom installation, maintenance and repair of…”
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
/G. Mayerschoff/
Trademark Attorney, LO-106
Hrs. 8:30 am- 6pm
571-272-9325
Fax- 571-273-9106
HOW TO RESPOND TO THIS OFFICE ACTION:
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.