UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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 76/459887

 

This letter responds to the applicant’s communication filed on September 19, 2003.

 

Resolved Issues: 

 

• Applicant’s amendment to seek registration under Section 44(e) is ACCEPTABLE. 

 

• The copy of applicant’s foreign registration and translation thereof are also ACCEPTABLE. 

 

Unresolved Issues:

 

Identification of Goods

 

In the first Office Action, the Examining Attorney requested that applicant amend the application to include a definite identification of goods.  The identification of goods remains unacceptable as indefinite. Although §44 exempts qualified applicants from the use requirements of §1 of the Trademark Act, §44 applicants must meet all other requirements for registration set forth in the Trademark Act and relevant rules.  Registration in a foreign country does not automatically ensure eligibility for registration in the United States.  In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); Order Sons of Italy in America v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).  TMEP § 1007. 

 

The requirement to amend the application to include definite wording is MAINTAINED and is made FINAL.  Applicant may amend to the following, if accurate: 

 

The applicant may amend this wording to the following, if accurate.  TMEP §1402.01. 

 

1. Scientific, electric, electronic apparatuses and instruments for the transport, conduction, distribution, transformation, accumulation, regulation, filtering, measuring, signaling, control or operation of electric current, namely, [specify common commercial name of apparatuses and instruments] and including the electric or electronic components for such apparatuses and instruments; rectifiers; semi-conductors; electric relays; condensers; inductances; circuit breakers; electric switches; contactors; automation products namely, programmable logic controllers; control panels; static converters; electronic programmers; batteries; electric accumulators; supply, filtering, transformation, maintenance and storage apparatuses of electric energy, namely, [specify common commercial name of apparatuses]; computer software (recorded computer programs) that [state function and field, if applicable, of software] and computer hardware associated to with such apparatuses (International Class 9). 

 

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.  In addition, the identification of goods and services covered by the §44 basis may not exceed the scope of the goods and services identified in the foreign registration.  Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Löwenbräu München, 175 USPQ 178 (TTAB 1972). 

 

Recitation of Services: Indefinite

 

The recitation of services also remains unacceptable as indefinite because the nature of some of the services is unclear.  The applicant may amend the identification to substitute the following wording, if accurate.  TMEP §1402.11.  The requirement to amend the application to include definite wording is MAINTAINED and is made FINAL. 

 

2. Electrical installation services, namely, repair and installation of [state type of equipment installed and repaired]; preventive maintenance of [state type of equipment maintained] (International Class 37). 

 

3. Telecommunication services, namely, [specify common commercial name of actual services, e.g.,  providing telecommunications connections to a global computer network, the transmission of voice, data, images, audio, video and information via telephone, satellite and global computer networks; personal communications services; paging services; wireless roaming services, etc.]; telecommunications services provided on computer networks, namely, [specify common commercial name of actual services, e.g., telecommunications gateway services, etc. ] (International Class 38). 

 

4. Electrical distribution and industrial automation apparatuses Telemonitoring, diagnostics, preventive maintenance and remote troubleshooting services in connection with hardware and software problems provided on an electronic site accessible via computer networks (International Class 42). 

 

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.  In addition, the identification of goods and services covered by the §44 basis may not exceed the scope of the goods and services identified in the foreign registration.  Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Löwenbräu München, 175 USPQ 178 (TTAB 1972). 

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 285-1184; FAX (703) 746-6228

(703) 308-9113 ext. 480 (Thurs.)

 

 

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.