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  76/455009            KUBOTA

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Statement

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. §1052(d).  TMEP §704.02.

 

However, the applicant must respond to the following issues.

 

The applicant must amend the identification of goods in International Class 7

The wording “pumps for municipal (including waterworks and drainage/sewerage system)” identification of goods is indefinite because the applicant uses the wording “including.” The identification of goods must be specific.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  Additionally, the applicant must delete the parentheses.  Parentheses are reserved for administrative use by this Office. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following wording, if accurate:  pumps for municipal waterworks, municipal drainage and sewerage systems, and industrial water system applications.

 

The wording “pumps for power plant and steel mill applications; pumps for chemical plants” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the particular types of pumps.  This information may be in the nature of the material to be pumped (e.g.,  water pumps; compressed air pumps, etc) or the generic nature of the pumps themselves (e.g., centrifugal pumps, positive displacement pumps, etc.). TMEP §1402.01.

 

The applicant must amend the identification of goods in International Class 11

The wording “valves for municipal (including waterworks and drainage/sewerage system)” identification of goods is indefinite because the applicant uses the wording “including.” The identification of goods must be specific.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  Additionally, the applicant must delete the parentheses.  Parentheses are reserved for administrative use by this Office. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

The wording “valves” in the identification of goods is too broad because it could include items classified in other classes. For example, manually operated valves of metal are classified in  International Class 6; valves which comprise parts of machines or pumps are properly classified in International Class 7; automatic valves are in International Class 9; and plastic valves other than machine parts are classified in International Class 20.  The only valves properly classified in International Class 11 are those valves which comprise common plumbing fittings.  The applicant must amend the identification to specify the particular nature of the valves and adopt the appropriate International Class(es).  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

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 that are not within the scope of goods set forth in the present identification.

 

The applicant may find it helpful to consult the Trademark Acceptable Identification  of Goods and Services Manual, available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Special information regarding multiple-class applications

The application identifies goods that may be classified in several additional international classes.  Therefore, the applicant must 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. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 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 chooses to add one or more International Classes to the application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods 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 not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

The applicant must indicate the significance of the term KUBOTA

The applicant must indicate whether “KUBOTA” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

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

 

 

 

/Michael W. Baird/

Examining Attorney

Law Office 114

Telephone: (703) 308-9114 ext. 107

Fax:            (703) 746-6370

 

 

 

 

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.