Priority Action

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 April 14, 2004 and via e-mail on April 16, 2004.

 

E-mail correspondence

Per the authorization in the e-mail of April 16, 2004, this action is being sent via e-mail to hrittner@gbpatent.com.

 

Upon review of the application file by the examining attorney, it has been determined that the final refusal issued October 17, 2003 was incorrect because it did not include the requirement for an amendment to the services.  Therefore, the previous final refusal is withdrawn, and a new final refusal must be issued. 

 

Recitation of services 

THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

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 the wording “services in the field of agriculture and forestry” identifies services that may be classified in different international classes.  For example, research services in these fields are in International Class 42, while other services such as consultation, are in International Class 44.  Therefore, the applicant must identify further the exact nature of the services.   The applicant may adopt the following recitation, if accurate: 

 

Services in the field of science and technology, namely, as well as 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; research services in the field of agriculture and forestry, 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 horticulture; services in the field of agriculture and forestry, namely, (the applicant must identify the services specifically in order to ensure the proper classification.  Consultation is in International Class 44, while research, for example, is in International Class 42), in International Class 42. 

 

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.

 

Options for responding to a final refusal

If applicant does not respond within six months of the mailing date of this final action, then the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  services in the field of agriculture, horticulture and forestry.  The application will proceed forward for the remaining services.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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

(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 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