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  76/468850

 

This letter corresponds to the applicant’s communication filed on October 14, 2003.  The applicant’s foreign certificate is acceptable.  The applicant’s identification is still indefinite,  in certain instances beyond the scope and some goods are in a class other than the one identified by the applicant.

 

FINAL - Recitation of Services Unacceptable

If the applicant responds to a non-final Office action requiring an amendment to the identification of goods and services, and the identification is still unacceptable, the examining attorney must issue a final requirement to amend the identification of goods and services. EXAMINATION GUIDE NO. 4-00 December 11, 2000

 

The proposed amendment of the identification is unacceptable because the wording are indefinite.  It also appears that the services may be classified in more than one class.  The applicant must amend the recitation to list each item by its common commercial name.  TMEP sections 804 and 804.03.

 

The applicant may adopt the following recitation(s)/classification(s), if accurate:

                       

International Class 007: Electric motors for machines and their parts except for land vehicles, namely,  synchronous motors, asynchronous motors, linear motors; electric motor kits for machines except for land vehicles, comprising of asynchronous electric motor kits; electrically operated screwdrivers and drills; industrial robots; industrial welding machines

 

International Class 009: Electrical and electronic control, regulating, switching and monitoring devices, electrical and electronic control, regulation, switching devices in the nature of controls and regulators for driving machine axes, namely, electrical controllers for driving machine axes; switches, rectifies, frequency converters for servo motors, namely, electric frequency converters and electric switches for servomotors; electrical drive mechanisms, namely, electric drives for motors of production  machines; electrical drive system equipment for the regulation and operation of machines, namely, power supply units, control units, position controls, speed controls, force controls, analog and digital interface modules, drive computers; computer programs for the control of the work cycle of numerically controlled machine tools; computer programs used to automate the operation of machine tools; computer programs used for operating electrical and electronic control regulating, switching and monitoring devices and computer programs used to automate the operation of machine tools.

International Class 042: Technical consultation for others relating to electric and electronic control, regulating, switching and monitoring devices, namely, relating to handling and assembly systems, packaging and food stuff machinery, printing presses and paper processing machines and machine tools, industrial robot systems, welding installations and industrial assembly tools; computer services, namely, creation and development of computer programs relating to control and drive mechanisms.

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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

Identification/Recitation Guide

The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant, but are instead provided only as suggestions.  It is the applicant's duty and prerogative to identify the goods and services.   TMEP Section 804.06.  

 

For additional information about the proper identification of goods and recitation of services the applicant may refer to an on-line copy of the “Trademark Acceptable Identification of Goods and Services Manual” located at the United States Patent and Trademark Office Website,   http://atlas/netahtml/tidm.html.                         

 

The refusal is therefore maintained and made FINAL

 

Responses To A Final Action

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.

 

If applicant fails to respond within six months of the mailing date of this final action, then the goods and/or services/class(es) to which the final refusal(s) and/or requirement(s) apply will be deleted from the application.  The application will proceed forward for the remaining goods and/or services/class(es).  37 C.F.R. §2.65(a).

 

 

 

 

 

 

 

/Ysa de Jesus/

Trademark Attorney

US Patent and Trademark Office

(t)703.308.9114 x-476

 

 

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.