UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number 76/436090

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

This letter responds to the applicant's communication filed on July 18, 2003.  The applicant has submitted a true copy of the German registration on which the application is based and a signed English translation thereof.  In addition, the applicant has submitted a signed, properly worded declaration attesting to the facts set for in the original application.

 

IDENTIFICATION OF GOODS

 

The following issues were discussed in communication with Adrienne White on August 20, 2003.

 

The applicant was required to clarify the nature of the goods on which the applicant has a bona fide intent to use the mark.  The following identification of goods remain unacceptable and the requirement for an acceptable identification of goods is maintained and made FINAL.

 

Class 9

 

The wording “measurement transmitters” in the identification of goods in each place where it appears is unacceptable as indefinite.  When used in combination with the wording “by radio, telephone and internet” and with “type and transducers for measurement,” it is unclear as to what type of goods the applicant is referring. The applicant must amend the identification to specify the common 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.

 

Class 10

 

The wording “cast parts for doctors, dentists and dental technicians’ laboratories” in the identification of goods is too broad because it could include items classified in other classes.  For example, the “cast parts” could be for use in constructing and preparing casts of patients’ teeth or for use as parts of machines.  The applicant must amend the identification to list each item by its common commercial name.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

The wording “mouth guards for medial purposes, namely, instruments for measuring the diameter of ophthalmic lenses” is unacceptable.  It appears that the applicant has identified two very distinct goods, one of which may not be within the scope of the original identification of goods.  The applicant may amend this wording as follows, if accurate:  “mouth guards for medical purposes.”

 

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. 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 goods set forth in the present identification.

 

RESPONSE

 

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 Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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). 

 

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

 

PLEASE NOTE:  All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

 

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Adrienne White on August 20, 2003, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

The identification of goods is amended as follows:

 

Class 5

 

metallic and non-metallic working materials for doctors, dentists and dental technicians' laboratories, namely precious metals and their alloys, also with base metals, as well as base metals and their alloys, metal ceramic, porcelain-fused precious metal alloys, porcelain-fused alloys free of precious metals, ceramics and plastics for the production of inlays, crowns, bridges, plates, medical and dental prostheses and assistant parts for prostheses; embedding masses, imprint masses, duplicating masses, plasters, polishing pastes, electrolyte gloss fluids, abrasives of precious corundum and glass pearls for medical, dental and dental technique purposes; modeling waxes, templates of wax, finished wax parts in the nature of veneers, inlays, and onlays, all for medical and dental purposes and dental technicians' laboratories; tooth-filling agents, namely direct filling materials, dental cements; and dental inlays in International Class 5.”

 

The “finished wax parts in the nature of plates, crowns, bridges, veneers, inlays, onlays, partial denture, [and] full dentures” previously classified in International Class 5 are hereby amended to International Class 10.

 

Class 7

 

The wording “machines and appliances for medial and dental purposes” is amended to read “machines and appliances for medical and dental purposes.”

 

The wording “drilling and griding heads for dental laboratory use” is amended to read “drilling and grinding heads for dental laboratory use.”

 

FILING BASIS – SECTION 1(b)

 

The applicant’s filing basis under Section 1(b) is hereby deleted as per the applicant’s communication of July 18, 2003.

 

 

Jennifer D. Chicoski

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 117

(703) 872-9208 - FAX

jennifer.chicoski@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