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

 

This letter responds to the applicant’s communication filed on October 6, 2003.

 

The applicant’s statement regarding the significance of the mark has been accepted and entered into the record.

 

The examining attorney notes the applicant’s addition of International Class 6 to the application.

 

Requirement to amend identification of goods MAINTAINED

In International Class 6, the wording “Valves of metal other than machine elements . . .” in the amended identification of goods is too broad because it could include items classified in other classes. The only types of valves which are properly classified in International Class 6 are those which are manually operated.  The applicant may amend the identification to substitute the following wording, if accurate:  “Manually operated valves of metal other than machine elements . . ..” TMEP §§1402.01 and 1402.03.

 

Upon review of the file, the examining attorney finds that his suggestions with regard to the identification in International Class 7 were somewhat inaccurate.  As a clarification, the applicant is advised that pumps which are designed to pump water, for whatever purpose, are generally classified in International Class 11.  Therefore, the wording “Pumps for municipal water system applications and industrial water system applications; pumps for power plant and steel mill applications; pumps for chemical plants; pumps for desalination plants; pumps for dockyard drainage; pumps for flood control applications; pumps for sewage treatment system applications; pumps for irrigation system applications” in the amended identification of goods is too broad because it could include items classified in other classes.  If these are water pumps, the applicant must so specify and reclassify all the goods into International Class 11.  If some or all of the goods are not water pumps, the applicant must either specify the particular type of pump (e.g., rotary, positive displacement, etc.) or the particular fluids/gases intended to be pumped. TMEP §§1402.01 and 1402.03.

 

The amended identification in International Class 11 remains indefinite for the reason stated in the original Office action. Specifically, the wording “hydraulic and mechanical valves” in the identification of goods is too broad because it could include items classified in other classes. For example, 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.

 

To recap, the applicant may adopt three or more of the following identification of goods, if accurate:

 

Manually operated valves of metal other than machine elements, namely, butterfly valves, gate valves, slide valves, ball valves, cone valves, check valves and float valves, in International Class 6.

 

Valves for pumps and machines, namely, hydraulic and mechanical valves for municipal water system applications and industrial water system applications, for power station and flood control applications, for refineries and oil and gas pipeline applications, and for steel works applications, in International Class 7.

 

Automatic hydraulic and  automatic mechanical valves for municipal water system applications and industrial water system applications, for power station and flood control applications, for refineries and oil and gas pipeline applications, and for steel works applications, in International Class 9.

 

Water pumps for municipal water system applications and industrial water system applications; water pumps for power plant and steel mill applications; water pumps for chemical plants; water pumps for desalination plants; water pumps for dockyard drainage; water pumps for flood control applications; water pumps for sewage treatment system applications; water pumps for irrigation system applications; plumbing fittings, namely, hydraulic and mechanical valves for municipal water system applications and industrial water system applications, for power station and flood control applications, for refineries and oil and gas pipeline applications, and for steel works applications, in International Class 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 goods that are not within the scope of goods set forth in the present identification.

 

The requirement to submit an acceptable identification of goods is MAINTAINED.

 

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. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, 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 or services 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 or services 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 or services 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).

 

Requirement to Submit Specimen of Use for International Class 6 MAINTAINED

As noted in the original Office action, if the applicant chose to add International Class 6 to the application, the applicant was also required to submit a specimen of use for the new class.  While the applicant has added the class, the applicant has not submitted a specimen of use.  The current specimen of use is unacceptable as evidence of actual trademark use because it fails to demonstrate use of the mark in conjunction with the claimed valves. The specimens only show use of the mark on pumps.  Therefore, the applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The specimen for International Class 6 was in use in commerce at least as early as the filing date of the application. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________                                 

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

PLEASE NOTE:  Should the applicant adopt the suggested identification of goods above, the only goods remaining in International Class 7 would be valves.  As noted, the specimens currently in the file only support use of the mark in conjunction with pumps.  If the applicant adopts the suggested identification, the applicant must also supply a substitute specimen for International Class 7 (and 9, if necessary).

 

The requirement to submit an acceptable specimen for the claimed goods is MAINTAINED.

 

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

 

 

/Michael W. Baird/

Senior Attorney

Law Office 116

Telephone: (703) 308-9112 ext. 126

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.