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  76/461032

 

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

 

 

NO CONFLICTING MARKS NOTED

 

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 1105.01.

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

International Class 9:                        Medical health screening instruments, namely, audiometers and component parts therefor;

 

International Class 10:                        Specialized furniture for medical use in the nature of soundproof test enclosures.  TMEP §1402.01.

 

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.

 

 

COMBINED CLASS APPLICATION

 

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 submit one specimen of use for each class; this specimen must be of a type which were in use at least as early as the filing date of the application. 37 C.F.R. Section 2.86(b).

 

               (2)  The applicant must state dates of first use and use in commerce for the mark in each class; these dates must be at least as early as the filing date of this application.  37 C.F.R. Sections 2.33(a)(1)(vii) and 2.86(b).

        

               (3)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (1) and (2) above.  37 C.F.R. Sections 2.59(a) and 2.71(d)(1).

        

               (4)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

        

               (5)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  The filing fee is $335.00 per class.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.

 

 

DISCLAIMER

                 

The applicant must disclaim the descriptive wording “AUDIOMETER” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it identfies the services of the Applicant.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use AUDIOMETER apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

IMPROPER USE OF THE REGISTRATION SYMBOL

 

The specimens show use of the federal registration symbol with the mark; however, Office records do not show that the mark is registered.  The applicant may not use the federal registration symbol until a mark is registered in this Office.  After registration of the mark, the applicant may use the symbol only with the specific goods or services recited in the registration. TMEP sections 906 and 906.01.

 

 

/Bridgett G. Smith/

Examining Attorney

Law Office 115

(703) 308-9115 x 217

(703) 872-9237 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 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.