Offc Action Outgoing

The following requirement is maintained and continued: (1) Identification of Goods. Upon further review of the Identification of Goods, the examining attorney has found that certain language remains indefinite. The examining attorney apologizes for any inconvenience this may cause.

Identification of Goods:

The identification of goods or services should set forth common names, using terminology that is generally understood. The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).

The wording “Pre-assembled service manifolds for servicing refrigeration and air condition units” in the identification of goods must be clarified because it is indefinite. TMEP §1402.01. Please identify the goods by common commercial or generic name. Additionally, applicant classified these goods in International Class 011; however, the correct classification is International Class 007. Applicant must either delete these goods and/or services or add International Class 007 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

Applicant classified the goods, “Coolant charging units, namely refrigerant manifolds for refrigerators and air conditioners” in International Class 011; however, the correct classification is International Class 007. Applicant must either delete these goods and/or services or add International Class 007 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

Applicant may substitute the following wording, if accurate:

International Class 006:

Metal couplers for hoses; and metal fittings for connecting refrigeration services hoses to access valves; manifold repair kits for refrigeration and air conditioning systems comprised of metal valve handles, metal springs, metal valve stems, and metal washers sold together as kits.

International Class 007:

Pre-assembled service manifolds for servicing refrigeration and air conditioning units, namely, charging manifolds for refrigerators; coolant charging units, namely refrigerant manifolds for refrigerators and air conditioners.

International Class 008:

Manually operated pipe and tube working tools, namely, tube benders, flaring tools, swaging tools, shears, reamers, deburrers, and pipe and tube cutters; manually-operated ratchet wrenches for tube fittings and fasteners; manually-operated pinch off tools for use in closing or pinching-off tubing; and hand operated wire cutters, crimpers and strippers.

International Class 009:

Pressure gauges; and pressure testing units for air conditions and refrigerators; tubing test plugs.

International Class 011:

Air conditioner piercing and shut off valves.

International Class 017:

Non-metal hoses for use in the air conditioning and refrigeration service industries.

TMEP §§1402.01 and 1402.03.

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.

Please also note that parentheticals are not acceptable in the identification. Where indicated “{please identify…},” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods/services without parentheses. In instances where the goods/services may be classified in several different classes, the applicant must list those goods/services separately according to class.

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

Requirements for a Combined Application:

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

(3) For each additional class of goods and/or services, applicant must submit:

(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

Please note that the specimen(s) of record are acceptable for class(es) 006, 007 008, 009, and 017 only.

Specimen Unacceptable:

THIS REQUIREMENT APPLIES ONLY TO INTERNATIONAL CLASS 011.

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services properly classified in International Class 011. An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services based on Section 1(a) in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04.

In this case, the specimens submitted consist of photographs of wire cutters, hoses, pressure gauges, manifolds, and couplers. The specimens do not appear to show the applicant’s mark IMPERIAL associated with, “air conditioner piercing and shut off valves.”

Therefore, applicant must submit the following:

(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Sample Declaration for a Substitute Specimen:

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

Declaration for Amending to Section 1(b):

As stated above, if the applicant cannot satisfy the specimen requirement and would like to amend the application filing basis to Section 1(b) intent to use, the following is a properly worded declaration:

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in the application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

Claimed Prior Registration Cancelled/Expired:

Applicant’s claim of ownership of U.S. Registration No. 0336341 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled/expired. Only claims of ownership of live registrations are printed. 37 C.F.R. §2.36; TMEP §812.

Response Guidelines:

There is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Colleen Dombrow/

Trademark Attorney

Law Office 101

Direct Dial: (571) 272-8262

Facsimile: (571) 273-9101

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.gov.uspto.report/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.