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  76/319531

 

This letter responds to the applicant’s communications filed on July 1, 2002 and October 27, 2003.

 

The applicant (1) amended the identifications of goods; (2) submitted a substitute drawing of the mark; (3) explained the significance of the mark; (4) submitted a certified copy of the foreign registration; and (5) deleted the Section 1(b) filing basis.  Nos. (2) through (5) are acceptable.  No. (1) is acceptable, in part.  The identifications of goods in International Classes 7, 9, and 17 are acceptable and have been entered into the record.[1]

 

1.         Mark Differs on Drawing Page and Foreign Registration

 

The mark shown on the drawing page differs from the mark shown on the foreign registration.  In particular, the colors red and blue are claimed as features of the mark in the foreign registration.  The mark in the U.S. application, however, does not contain a color claim.  The applicant must add a color claim and color description to the U.S. application.  37 C.F.R. §2.51; TMEP §§807.14, 1011.01 and 1011.03.

 

The applicant must submit the following:  (1) a statement that “the color(s) red and blue are claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, e.g., “the word “DIRAK” appears in red, and the dot above the letter “I” and the line partially surrounding the wording appear in blue.”  37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

2.            Identification and Classification of Goods in International Class 6

 

a.         The wording “bushes” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “bushings,” if accurate.  TMEP §1402.01.

 

b.         The applicant must clarify the identification of goods by indicating the specific items with which all of its “closures” are used, e.g., bottles, containers, bags, etc.  TMEP §1402.01.

 

c.         The wording “bar closures” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “metal bar closures,” if accurate.  TMEP §1402.01.

 

d.         The applicant must clarify the identification of goods by indicating the specific use(s) of its various “handles.”  TMEP §1402.01.

 

e.         The nature of the applicant’s “drawing pockets for protecting paper sheets” is not clear from the present record.  In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type.  If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).  The applicant is advised that “Protective covers for sheets or paper and pages of books and the like” and “Sleeves for holding and protecting stamps” are classified in International Class 16.

 

f.          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/.

 

g.         If the applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

h.         The applicant may adopt the following identification of goods in International Class 6, if accurate:  Ironmongery and small items of metal hardware, namely, screws, nuts, bolts, pins, rivets, retaining rings, washers, serrated washers, rollers, bushings, springs; door fittings of metal, namely, door hinges, door handles; fittings of metal for sheet metal cabinets, namely, hinges, handles, non - electric locks of metal, namely, box-type bolt locks, bar locks, slam locks, snap locks, pad locks, bolts for locks; metal quick closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], metal snap closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], metal swing-handle closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], ball catches of metal, metal bridge clamp closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], metal slam latch closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], metal turn tension closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], metal bar closures for sheet metal cabinets; hinges of metal, namely, clamped on hinges, concealed hinges, screw on hinges, profile type hinges, hinges for serial cabinets, weld-on strip-roll hinges, hinges with bushings, 3-dimensional hinges, [indicate type, e.g., door, cabinet, etc.] knob handles of metal, door handles of metal, molds of metal; metal accessories, namely, key hole covers, keys, swing handles for [indicate specific use, e.g., for doors], lock profile cylinders, spring latches, door catches, lid supports for covers and doors for sheet metal cabinets, protection windows, handles [indicate specific use, e.g., for doors], finger cups in the nature of handles, non-mechanical machine handles, push latches, tongues for latches, turn latches, locking bars, bar guides, turn tension closures for [indicate specific item with which it is used, e.g., bottles, containers, bags], draw tension bolts, and clip-turn-bolts.

 

i.          Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the original identification.  TMEP §1402.07(d)  This restriction applies to all of the applicant’s amended identifications of goods.

 

For the foregoing reasons, the requirement that the applicant amend the identification of goods in International Class 6 is CONTINUED.

 

3.            Identification and Classification of Goods in International Class 8

 

a.         The wording “fitting tools” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant also must indicate that the fitting tools are “hand-operated.”

 

b.         The applicant has classified “metal handles and non-metal grip handles for hand-operated tools” in International Class 8.  The correct classification is International Class 6 for the metal handles, and International Class 20 for the non-metal grip handles.  The applicant must either delete the foregoing goods or add the goods to its identifications in International Classes 6 and 20.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The applicant may adopt the following wording in International Class 6, if accurate:  Metal handles for hand-operated tools.  The applicant may adopt the following wording in International Class 20, if accurate:  Non-metal grip handles for hand-operated tools.

 

c.         The applicant may adopt the following identification of goods in International Class 8, if accurate:  Hand-operated tools, namely, scissors; hand-operated tools for handling profiles, namely, mitring scissors specially made for rubber sealing with steel core; hand-operated fitting tools for window seals, namely, [give common commercial name or describe].

 

For the foregoing reasons, the requirement that the applicant amend the identification of goods in International Class 8 is CONTINUED.

 

4.            Identification and Classification of Goods in International Class 20

 

a.         The applicant must clarify the identification of goods by indicating the specific items with which its “closures” are used, e.g., bottles, containers, bags, etc.  TMEP §1402.01.

 

b.         The wording “bushes” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “bushings,” if accurate.  TMEP §1402.01.

 

c.         The applicant must clarify the identification of goods by indicating that its finger cups are “non-metal.”  TMEP §1402.01.

 

d.         The applicant must clarify the identification of goods by indicating the specific use(s) of its “swing handles.”  TMEP §1402.01.

 

e.         The nature of the applicant’s “drawing pockets for the protection of paper sheets” and various “profiles” is not clear from the present record.  In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type.  If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).  The applicant is advised that “Protective covers for sheets or paper and pages of books and the like” and “Sleeves for holding and protecting stamps” are classified in International Class 16.

 

f.          The applicant may adopt the following identification of goods in International Class 20, if accurate:  Locks, not of metal; non-metal closures for [indicate specific item with which it is used, e.g., bottles, containers, bags]; hinges, not of metal, namely, plastic hinges, hinges with polyamide bushings; non-metal finger cups in the nature of handles; non-mechanic, nonmetal machine handles; non-metal accessories, namely, key hole covers, keys, swing handles [indicate specific use, e.g., for doors], door catches, lid supports for covers, protection windows, bolts, tongues for locks, rotation bolts, locking bars, bar guides, rubber profiles for [indicate function or use], clip on profiles for [indicate function or use], and edge protection profiles for [indicate function or use].

 

For the foregoing reasons, the requirement that the applicant amend the identification of goods in International Class 20 is CONTINUED.

 

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

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Examining Attorney

Law Office 115

(703) 308-9115 ext. 123

 

 

 

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.