UNITED STATES PATENT AND TRADEMARK OFFICE

 

EXAMINER’S AMENDMENT/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 76/460783

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Rita Carrier on May 22, 2003, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

The applicant owns Reg. Nos. 2,376,527; 1,925,099; 1,246,243 and 996,309.

 

“THOMSON” has acquired distinctiveness per Section 2(f) as a result of ownership of the claimed registrations.

 

The applicant wants to maintain both Sections 1(b) and 44(d) as filing bases.

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

IDENTIFICATION OF GOODS AND SERVICES

 

As explained to the applicant’s attorney, the identification is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial names of the goods.   TMEP §1402.01.

 

The applicant may adopt the following identification, if accurate: 

 

“Machines and machine tools for the cutting and forming of materials; electric motors for machines; washing machines for clothes; dish washing machines; refrigerator compressors; transmissions being parts of machines; speed regulators being parts of machines; hydraulic and wind turbines; compressors for machines,” in class 7;

 

“Iron pressing machines; telephones; glass tubes, prisms and satellites for scientific purposes; optical character recognition apparatus; optical filters and scanners; movie projector; cinematographic film; digital, photographic and video cameras and projectors; audio mixers, speakers and tape recorders; digital phones and video recorders; data processors; audio, mobile data and video receivers; microwave, radio, telephone, satellite and video transmitters; amplifiers; radar, radon and smoke detectors; gas detectors for detecting the presence of gas; remote controls for audio, photographic, telecommunications and video equipment; blank magnetic data carriers; radios; television sets; film editing apparatus; cathode ray tubes; electric detection coils; circuit breakers; integrated and printed circuits; encoders; decoding apparatus for encoded items; projection and video screens; blank audio and video tapes; blank diskettes; personal stereos; stereo amplifiers, receivers and tuners; headphones; radios incorporating clocks; telephone answering machines; dictation machines; antennas; computer software for encoding and decoding audio and video data; electric wires; coaxial cables; light emitting diodes; lighting ballasts,” in class 9;

 

“Clothes dryers; industrial dryers for heating and dehumidifying; dryers used for the removal of solid, liquid and vapor contaminants from compressed air and gases; commercial and domestic cooking ovens; refrigeration equipment, namely, food and beverage chilling units; refrigerators; electric lighting fixtures; light diffusers; light reflectors; lighting tracks; wall lights; electric griddles, grills, heating fans, kettles, ranges, stoves and toasters; steam generators; ventilating exhaust fans; ventilating fans for commercial and industrial use; ventilating louvers; air conditioners,”  in class 11;

 

“Printing and poster paper; paper stock; strips of cardboard; plastic sheets for printing; account, address, appointment, ledger and note books; books, booklets and periodicals concerning [indicate subject matter]; book bindings,” in class 16;

 

“Business management consultation in the fields of radio and television; cooperative advertising; document reproduction; arranging of subscriptions for the newspapers of others,” in class 35;

 

“Installation and repair of commercial or industrial electronic equipment,” in class 37;

 

“Radio, television and video broadcasting; telephone communication services; broadcasting programs via a global computer network; electronic transmission of data and documents via computer terminals; communications services, namely, transmitting streamed sound and audio-visual recordings via the Internet; satellite transmission services; cable casting services,” in class 38;

 

“Cinema studios; cinematographic adaptation and editing; production of radio and television programs; motion picture film production; film and video editing; rental of movie projectors and accessories; rental of radios, televisions, VCRs and DVD players; sound recording studios,” in class 41;

 

“Engineering that does not include surveying, mapping, environmental sciences or architecture*; technical consultation in the field of operation of audio, television and video equipment; computer site and software design for others; intellectual property consultation,” in class 42.  TMEP §1402.01.

 

The applicant must rewrite the identification in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

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 those set forth in the present identification.

 

COMBINED APPLICATION REQUIREMENTS

 

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 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.  

 

 

 

/Ira Goodsaid/

Examining Attorney

Law Office 115

(703) 308-9115 ext. 159

ecom115@uspto.gov

 

 

 

 

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