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  76/441816

 

This letter responds to the applicant’s communication filed on May 21, 2003.  The applicant (1) submitted a new drawing, (2) amended the identification of goods in Classes 06 an 20 and (3) did not submit additional information regarding the goods.  Nos. 1 and the identification of goods in Class 20 are accepted and made part of the record.  The amended identification of goods in Class 06 remains indefinite.  The examining attorney makes final the requirement of a definite identification of goods.  The following is advised.

 

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

 

Final Requirement—Definite Identification of Goods/Services Statement

 

In the communication of May 21, 2003, the amended identification of goods in Class 06 remains indefinite.  The wording “L-bar connections for connecting two elements and which are formed like an L” 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.  Moreover, the wording in the identification of goods is too broad because it could include items classified in other classes, e.g., “electrical connectors” or “cable connectors” in which belong in Class 09 regardless of composition.  The applicant must amend the identification to list each item by its common commercial name.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

Further, the identification of goods is indefinite because the applicant uses the wording “in particular.”  The identification of goods must be specific.  The applicant should amend the identification to replace this wording with “namely” or place the wording “tubes” in front of “fittings.”  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

Moreover, the applicant did not submit additional information regarding a list of goods indicated in Office Action of February 6, 2003.  The examining attorney requires additional information regarding the goods “L-bar connections for connecting two elements and which are formed like an L.”  All other additional requirements regarding the other goods are hereby withdrawn.

 

The applicant may adopt the following, if accurate:

 

Metal building materials, namely hinges, hinge plates, clams, angle irons, L-bar connectors for connecting two [specify common commercial name, e.g., pipes] and which are formed like an L, handles for doors, doorknobs, support bars for supporting a door or a glass element, tube fittings for connecting metal elements, armatures for doors, joint hinges, band-and-hook hinges, strap hinges, brackets of metal for doors or windows, and sliding door systems, namely, metal runners in Internationa Class 06.

 

L-bar connectors for connecting two [specify common commercial name, e.g., cables] and which are formed like an L 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 and additional information in Class 06 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).

Change in Correspondence Address—Advisory

 

It appears that the applicant’s attorney has a new address.  The applicant must submit a written request to change the address of record.  Once the correspondence address is established for a particular application, it is not changed unless there is a written request by the applicant or the attorney of record to change the address. The mere transmittal of a response to an Office action bearing a new address for an applicant or an applicant's attorney does not effect a change in a correspondence address. TMEP § 603.02.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

/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.