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.

 

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

 

Serial Number  76/451726

 

The following issues were discussed in communication with Hanno Rittner on October 16, 2003.

 

Identification of goods

The examining attorney has reviewed the applicant's amended identification of goods carefully but it remains indefinite.  For the reasons below, the refusal to register is maintained and made FINAL.

 

In the initial office action, the identification of goods was determined to be unacceptable as indefinite because it did not clearly identify the goods.  Although the applicant has amended the identification of goods, it remains indefinite.  The identification of goods is unacceptable as indefinite because “condiments” may be classified in different international classes.  Oils used as condiments are in International Class 29, while other condiments may be classified in International Class 30.  Therefore, in order to ensure proper classification, the applicant must identify the specific condiments.  The applicant may adopt the following identification, if accurate: 

 

Machines for treatment and processing of cereal grains, namely, roller mills, sifters, and hammer mills; detached replacement parts and components for these machines, in International Class 7.

 

Condiments, namely, pepper oil, in International Class 29.

 

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, namely, wheat flour and breakfast flakes, and flour and cell parts of wheat bran sold as an integral ingredient of condiments and sauces; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt; mustard; vinegar, condiments, namely sauces; spices; ice, in International Class 30. 

 

TMEP §1402.01.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Recitation of services 

The examining attorney has reviewed the applicant's amended recitation of services carefully but it remains indefinite.  For the reasons below, the refusal to register is maintained and made FINAL.

 

In the initial office action, the recitation of services was determined to be unacceptable as indefinite because it did not clearly identify the services.   Although the applicant has amended the recitation of services, it remains indefinite.  The recitation of services is unacceptable as indefinite because “flour milling and flaking” is properly classified in International Class 40.  The applicant may adopt the following recitation, if accurate: 

 

Health and beauty care for people and animals, namely, wholesale and retail distributorships featuring enriched flour as flakes, enriched with cell parts of wheat bran, in International Class 35.

 

Services in the field of science and technology, namely, flour milling and flaking, in International Class 40.

 

Services in the field of science and technology, namely, research and development services relating to flour milling and flaking, and product processing research; industrial analyses and research in the field of design and development of computer programs; design and development of computers and computer programs; legal advice and representation, in International Class 42.

 

Services of a doctor; services of a veterinarian; health and beauty care for people and animals, namely, cosmetic body care services as part of health spa services featuring enriched flour as flakes, enriched with cell parts of wheat bran; services in the field of agriculture, horticulture, and forestry, in International Class 44. 

 

TMEP §1402.11.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Additional classes

In the initial office action, registration was refused because the application identified goods and services that may be classified in several international classes.  Therefore, the applicant was required to either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.  Because the applicant did not restrict the application to the number of classes covered by the fee and did not pay the fee for additional classes, the refusal to register is maintained and made FINAL.

 

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.  37 C.F.R. §2.6(a)(1). 

 

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.  

 

Foreign registration required

An application under Trademark Act Section 44(e), 15 U.S.C. §1126(e), must include a copy of a foreign registration from the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

 

The application does not contain a copy of the foreign registration.  Therefore, the applicant was required to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration.  If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).  Because the foreign registration was not submitted, the refusal to register is maintained and made FINAL.

 

Options for responding to final refusal

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. Section 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. Section 2.65(a).

 

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

 

 

/Eugenia K. Martin/

Eugenia K. Martin

Examining Attorney

Law Office 114

(703) 308-9114 x122

ecom114@uspto.gov

(703) 746-8114 (fax)

 

 

 

 

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