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  76/425223

 

This letter responds to the applicant’s communication filed on May 8, 2003.  The applicant (1) deleted the section 1(b) basis, (2) submitted a significance statement and (3) amended the identification of goods.  Nos. 1 and 2 and the services in Class 37 are accepted and made part of the record.  The examining attorney makes final the requirement of a definite identification of goods.

 

All other requirements have been accepted and made part of the record.

 

Final Requirement—Definite Identification of Goods Statement

 

In the communication of May 8, 2003, the amended recitation of services in Class 37 is accepted and made part of the record.  However, the amended identification of goods in Classes 07 and 09 are unacceptable.

 

The applicant may adopt the following, if accurate:

 

Goods in Class 07

The wording, “dosing systems comprising screw feeder for supply of a dosage of chocolate mass,” are goods in Class 09.

 

The wording, “seed crystallization systems for adding precrystallized chocolate mass to a chocolate mass”, is unacceptable as indefinite.  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  The applicant may amend “systems” to “machines,” or otherwise specify all component parts.

 

Machines for processing foodstuff, namely machines for processing cocoa and chocolate; agitating mills for reducing the size of nuts, almonds, sugar, cocoa butter, cocoa; mixers for mixing nuts, almonds, cocoa butter, cocoa and chocolate mass; seed crystallization machines for adding precrystallized chocolate mass to a chocolate mass; roll mills for size reduction of ingredients like nuts, almonds, sugar, cocoa powder; static mixers for mixing foodstuffs in Internationa Class 07.

 

Goods in Class 09

The wording, “apparatus and instruments, namely control panels, control systems and automation systems (devices) , as well as electrical installation for the above-mentioned installations and machines; measuring instruments and controlling devices for acquisition and processing of measured values; weighing and metering devices for the above-mentioned installations and machines; laboratory equipment for testing grains and flour”, by itself are goods that are not within the scope of the identification that was set forth in the application.  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 et seq. and 1402.07.  The applicant may include these goods as part of the goods “apparatus and instruments for weak-current engineering and control engineering components of machines and systems”, if applicable.  However, the wording, “control systems and automation systems (devices), as well as electrical installation for the above-mentioned installations and machines; measuring instruments and controlling devices for acquisition and processing of measured values; weighing and metering devices for the above-mentioned installations and machines; laboratory equipment for testing grains and flour.”  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  Please note that the applicant should refrain from using “installation” as part of goods because it denotes services in Class 37.

 

The wording, “analysis equipment for weak-current engineering and control engineering components of machines and systems, namely machines for processing foodstuff, namely machines for processing cocoa and chocolate, dosing systems comprising of dosaging screws, balance for supply of ingredients of a chocolate mass, agitating mills for reduction of sizes of ingredients like nuts, almonds, sugar, cocoa butter, cocoa, paddle mixers for mixing of above ingredients and chocolate mass, mixers for mixing of above ingredients and chocolate mass, seed crystallization systems comprising of storing tanks, dosing means for adding precrystallized chocolate mass to a chocolate mass, roll mills for size reduction of ingredients like nuts, almonds, sugar, cocoa powder, static mixers for separation of sizes of nuts or other ingredients”, must be prefaced with the wording “apparatus and instruments” for scope reasons.  Moreover, the wording “analysis equipment” is unacceptable as indefinite.  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  The applicant should delete “analysis equipment” and simply state the common commercial name and purpose, e.g., “computer hardware for analysis.”

 

The applicant must place a semicolon before the goods, “apparatus and systems, namely computer software for process monitoring, process control, for mixing, milling and conching of chocolate mass by intelligent software technologies”, to ensure separation of goods.

 

Please note that the goods, “machines for processing foodstuff, namely machines for processing cocoa and chocolate, agitating mills for reduction of sizes of ingredients like nuts, almonds, sugar, cocoa butter, cocoa, paddle mixers for mixing of above ingredients and chocolate mass, mixers for paddle mixers for mixing of above ingredients and chocolate mass, roll mills for size reduction of ingredients like nuts, almonds, sugar, cocoa powder, static mixers for separation of sizes of nuts or other ingredients,” by themselves are goods in Class 07.  The goods, “dosing systems comprising dosaging screw, balance for supply of ingredients of a chocolate mass, dosing means for adding precrystallized chocolate mass to a chocolate mass”, by themselves are goods in Class 09.  The goods, “seed crystallization systems comprising of storing tanks,” by themselves are in Class(es) 06 or 20 depending on composition, i.e., metal or nonmetal.  These goods are acceptable as stated in Class 09 because they are superfluous to the actual goods.

 

Apparatuses and instruments, namely computers for the storage of machine and system data, namely specific process technology data of cocoa and chocolate products manufacture, control and adjustment of machines and systems, namely machines for processing foodstuff, namely machines for processing cocoa and chocolate, dosing systems comprising dosaging screw, balance for supply of ingredients of a chocolate mass, agitating mills for reduction of sizes of ingredients like nuts, almonds, sugar, cocoa butter, cocoa, paddle mixers for mixing of above ingredients and chocolate mass, mixers for paddle mixers for mixing of above ingredients and chocolate mass, seed crystallization systems comprising of storing tanks, dosing means for adding precrystallized chocolate mass to a chocolate mass, roll mills for size reduction of ingredients like nuts, almonds, sugar, cocoa powder, static mixers for separation of sizes of nuts or other ingredients; apparatus and instruments for weak-current engineering and control engineering components of machines and systems, namely namely [specify common commercial name, e.g., computer hardware for analysis, control panels, electrical controllers, automatic valves, automated gates, bevels for measuring, scales, balances for weighing, gas meters, centrifugal metering pumps, labatory test tubes for grain and flour] used for machines for processing foodstuff, namely machines for processing cocoa and chocolate, dosing systems comprising of dosaging screws, balance for supply of ingredients of a chocolate mass, agitating mills for reduction of sizes of ingredients like nuts, almonds, sugar, cocoa butter, cocoa, paddle mixers for mixing of above ingredients and chocolate mass, mixers for mixing of above ingredients and chocolate mass, seed crystallization systems comprising of storing tanks, dosing means for adding precrystallized chocolate mass to a chocolate mass, roll mills for size reduction of ingredients like nuts, almonds, sugar, cocoa powder, static mixers for separation of sizes of nuts or other ingredients; apparatus and systems, namely computer software for process monitoring, process control, for mixing, milling and conching of chocolate mass by intelligent software technologies; dosing systems comprising screw feeder for supply of a dosage of chocolate mass in International Class 09.

 

TMEP §1402.01.

 

Please note that, while an application may be amended to clarify or limit the identification/recitation, additions to the identification/recitation are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods/services that are not within the scope of goods/services set forth in the present identification.

 

To the extent the suggested identification of goods or services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at www.uspto.gov under the heading Trademarks and the subheadings Guidance and Manuals and Legal Resources or at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 10, 2000, the fee for filing a trademark application is $325 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

The requirement that applicant submit a definite identification of goods statement is maintained and made FINAL.

 

Appellate Remedy

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  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. §2.65(a).

 

 

 

 

 

 

/William T. Verhosek/

Examining Atty/LO 114

703-308-9114x142

(Fax) 703-746-8114

ecom114@uspto.gov

 

 

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 E-mail, visit http://www.gov.uspto.report/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.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.