UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

 

    SERIAL NO: 76/381384

 

    APPLICANT:                          BAE SYSTEMS Electronics Limited

 

 

        

 

    CORRESPONDENT ADDRESS:

    STANLEY C. SPOONER

    NIXON & VANDERHYE P.C.

    1100 NORTH GLEBE RD., 8TH FLOOR

    ARLINGTON, VA 22201-4714

   

RETURN ADDRESS: 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

ecom108@uspto.gov

 

 

 

    MARK:          ARCHERFISH

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:   540-337

 

    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.

 

 

 

FINAL 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  76/381384

 

The applicant’s response to the first Office action was filed on January 8, 2003.  The examining attorney has reviewed the applicant’s amendments and arguments in favor of registration.  The Section 44(d) and Section 1(b) bases have been deleted from the application, and the certified copy of the foreign registration has been accepted and entered into the record.  Additionally, the likelihood of confusion refusal has been withdrawn.  As to the other outstanding issue, the examining attorney has determined as follows.

 

REQUIREMENT FOR AMENDED IDENTIFICATION OF GOODS MAINTAINED AND MADE FINAL

 

In the first Office action, the examining attorney indicated the following concerning the applicant’s identification of goods:

 

UNACCEPTABLE IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The application lists the goods “UNDERWATER MINE DISPOSAL APPARATUS INCLUDING PARTS AND FITTINGS THEREFOR” and “SCIENTIFIC, NAUTICAL, SURVEYING, ELECTRIC, OPTICAL, MEASURING, SIGNALLING, AND CHECKING APPARATUS, ALL CONCERNED WITH UNDERWATER MINE DISPOSAL, INCLUDING PARTS AND FITTINGS THEREFOR” and classifies all of such goods in International Class 9. The wording in the identification of goods is unacceptable as indefinite. TMEP section 804. Further, the applicant is advised that certain scientific, nautical, surveying, electrical and checking apparatus may be classified in classes other than Class 13 (e.g., electrical goods in Class 9).  To follow is the examining attorney’s suggestion concerning the applicant’s identification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestion, if accurate:

 

“UNDERWATER MINE DISPOSAL APPARATUS, NAMELY, ___________________ (specify common commercial name(s) of apparatus), INCLUDING PARTS AND FITTINGS THEREFOR” in International class 9.

 

AND

 

“UNDERWATER MINE DISPOSAL APPARATUS, NAMELY, ___________________ (specify common commercial name(s) of apparatus), INCLUDING PARTS AND FITTINGS THEREFOR USED FOR SURVEYING, MEASURING, SIGNALLING, AND CHECKING ____________ (indicate what is being surveyed, measured, signaled and checked)” in International Class 13.

 

If the applicant has access to the world wide web, it is strongly recommended that it review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services at http://www.uspto.gov/web/offices/tac/doc/gsmanual.

 

APPLICANT MAY NOT EXCEED SCOPE OF PRESENT IDENTIFICATION

OF GOODS

 

While an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

 

In its response to the first Office action, the applicant has requested that its identification of goods be amended as follows:

 

UNDERWATER MINE DISPOSAL APPARATUS, NAMELY, UNDERWATER CAMERAS AND SONAR FOR UNDERWATER SURVEYING AND CHECKING FOR MINES, FIBER OPTIC CABLES FOR SENDING AND RECEIVING DATA AND GUIDANCE INSTRUCTIONS, AND CONTROL ELECTRONICS FOR UNDERWATER GUIDED MUNITIONS, INCLUDING PARTS AND FITTINGS FOR ALL THE ABOVE GOODS” in International Class 9.

 

AND

 

“UNDERWATER MINE DISPOSAL APPARATUS, NAMELY UNDERWATER GUIDED MUNITIONS INCLUDING PARTS AND FITTINGS THEREFOR” in International Class 13.

 

The wording “control electronics” in the identification of goods in International Class 9 remains unacceptable as indefinite. TMEP section 1402.01.  Further, the applicant should clarify the identification of goods by substituting the word “AND” for the word “INCLUDING” (in both International Classes 9 and 13) and substituting the term “AFORESAID” for the term “ABOVE” (in International Class 9).  To follow are the examining attorney’s suggestions concerning the applicant’s identification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestions, if accurate:

 

UNDERWATER MINE DISPOSAL APPARATUS, NAMELY, UNDERWATER CAMERAS AND SONAR FOR UNDERWATER SURVEYING AND CHECKING FOR MINES, FIBER OPTIC CABLES FOR SENDING AND RECEIVING DATA AND GUIDANCE INSTRUCTIONS, AND ELECTRONIC CONTROLS FOR UNDERWATER GUIDED MUNITIONS, AND PARTS AND FITTINGS FOR ALL OF THE AFORESAID GOODS” in International Class 9.

 

AND

 

“UNDERWATER MINE DISPOSAL APPARATUS, NAMELY UNDERWATER GUIDED MUNITIONS AND PARTS AND FITTINGS THEREFOR” in International Class 13.

 

If the applicant has access to the world wide web, it is strongly recommended that it review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services at http://www.uspto.gov/web/offices/tac/doc/gsmanual.  For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

The applicant is reminded that, while an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

OPTIONS WITH RESPECT TO FINAL REFUSAL

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Commissioner if permitted by 37 C.F.R. Section 2.63(b). 37 C.F.R. Section 2.64(a).  Regarding petitions to the Commissioner, see 37 C.F.R. Section 2.146; TMEP sections 1702 and 1704.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a). 

 

Sonya B. Stephens

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 227 (phone)

(703) 746-8108 (fax)

ecom108@uspto.gov

 

 

How to respond to this Office Action:

 

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

 

To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm 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.uspto.gov/

 

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

 

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