UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

Serial Number  76/439870

 

The following issues were discussed in voice mail communication with Catherine Stockell on March 14, 2003.

 

 

Dual Filing Bases

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant's intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  If the applicant does so, the applicant may not subsequently rely on the foreign registration.  TMEP section 1006.01.

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration.  In this case, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  37 C.F.R. Sections 2.33(a)(1)(viii) and 2.39(b); TMEP sections 1004.05 and 1005.

 

Please also note, as indicated above, that this Office now accepts a “true copy” or photocopy of the foreign registration, with the applicant no longer required to submit a certification or certified copy.  This change went into effect on November 2, 2002.

 

 

Recitation/Classification of Services

 

Most of the recitation of services – which lists a large number of services in Classes 35, 36, 39, 41, and 42 – is acceptable as written.  However, parts of the Class 39 portion of the description are indefinite and/or classified in a different class.  Specifically:

 

(1) The term “transportation” is considered indefinite by this Office unless it also specifies the particular means of transportation – i.e., truck, rail, air, and/or boat.  Because the term “transportation” appears as the last part of the wording “storage, warehousing, handling and transportation of goods,” the examining attorney recommends that the applicant choose one of the following formats to ensure that the transportation aspect of these services is clearly delineated:

 

Storage, warehousing and handling of goods; transportation of goods by truck, rail and air [or similar clarifying wording for the particular methods of transportation]

 

            Storage, warehousing, handling and transportation, by truck, rail and air, of goods

 

(2) The wording “vehicle inspection” is acceptable; however, such services are properly classified in International Class 42, not 39.  It is also noted, in this regard, that the very last item in the current Class 42 description is “motor vehicle inspection.”  Accordingly, the applicant must delete the “vehicle inspection” wording from Class 39, and either leave the “motor vehicle inspection” wording at the end of Class 42 without change, or else amend it to the broader “vehicle inspection” if preferred.

 

(3) Finally in Class 39, the last item – “container inspection” – must be clarified and must also be transferred to Class 42.  It is noted that two of the applicant’s prior registrations (U.S. Reg. Nos. 2,312,859 and 2,312,860) contain the acceptable wording “inspection of land, sea and air shipping containers” in Class 42.  If this wording accurately describes the “container inspection” services in this case, then the applicant may resolve this issue by amending the description in that manner, and transferring these services to the end of the Class 42 identification.  Otherwise, the applicant must amend the wording to specify the particular type(s) of containers that are inspected through these services.

 

 

Please note, in making the above amendments, 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 services that are not within the scope of services set forth in the present identification.

 

 

 

 

 

 

 

If the applicant has any questions or needs assistance in responding to this Priority Action, please telephone the assigned examining attorney.  Please note:  The above issues may be resolved by Examiner’s Amendment, and the applicant is encouraged to telephone the examining attorney to expedite processing of this application.

 

 

Elizabeth A. Hughitt

Examining Attorney

Law Office 111

(703) 308-9111 x 250

ecom111@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