UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

SECOND 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  76/491309

 

The examining attorney acknowledges receipt of the applicant’s response and states as follows:

 

Identification of Goods

In the Office action dated August 11, 2003, the applicant was advised to amend the identification of goods because the wording “electrical welding apparatus” was unacceptable as indefinite.  The applicant has amended the identification of goods to add shielding gases for welding and soldering flux wire in International Class 1 as well as metal rods for brazing and welding, brazing and welding rod containers, regulators, valves, hoses and clamps sold individually, hammers, brushes, hammer and brush combinations for use in the field of welding, welding helmets, replacement lenses for welding helmets, hand shields, welding gloves, goggles, brazing and welding rod containers.

 

The proposed amendment to the identification cannot be accepted because it refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

Further, the applicant indicates that the “valves, hoses and clamps and ground clamps” are electrical welding apparatus sold as a unit and individually.  If these goods are sold individually, they are outside of the scope of the original identification of goods since the goods in the original identification for International Class 9 were limited to “electrical welding apparatus and electrical arc welding apparatus.”   These goods would only be acceptable in an amended identification of goods if they are integral components of the electrical welding apparatus identified in the original identification.  If this is the case, the applicant must rewrite the identification of goods to identify the components by purpose or function and to describe it as “sold as an integral component of _,” naming the final product.   The proper international class is that of the final product. TMEP section 1402.05.

 

In addition, clamps may be classified in more than one International Class depending on their function. Furthermore, it is unclear how the “nozzles, contact tips, tip cleaners, soapstones and holders,” are components of electrical welding apparatus.  As set forth above, if these goods are sold individually, they are outside the scope of the original identification of goods. If they are components of electrical welding apparatus such as welding torches, the applicant must rewrite the identification of goods to identify the components by purpose or function and to describe it as “sold as an integral component of _,” naming the final product.   The proper international class is that of the final product. TMEP section 1402.05.

 

Further, the wording “regulators” and “starter electrodes” is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

The applicant may adopt the following, if accurate:

 

• Air compressors; hand held air power and pneumatic tools, namely, impact wrenches, nailers, drills, air chisels, hammers, grinders, staple guns, saws, ratchets, punches, polishers, caulking guns, spray guns, sand blasters and winches, electric welding machines; pressure washers; electrical arc welding machines. (Class 7).

·        Electric arc welders; electrical welding apparatus, namely, {indicate specific goods, e.g., welding electrodes, welding torches, starter welding electrodes and electrode holders sold as a unit; automatic valves, regulators, metal hoses, ground clamps and igniters all sold as integral components of welding torches}. (Class 9).

 

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.

 

Name of a Living Individual

The examining attorney renews the request for a statement from the applicant concerning the name featured in the proposed mark.  If the name CAMPBELL HAUSFELD shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name.  If the name does not identify a living individual, the applicant should state so for the record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.

 

Other Issues

The examining attorney acknowledges that the applicant has properly addressed the other issues raised in the initial office action.

 

Conclusion

If the applicant has any questions about the Office Action, please contact the assigned examining attorney.                                                          /Linda M. Estrada/

Trademark Attorney, Law Office 105

(703) 308-9105, ext. 242

(703) 872-9825 Fax

ecom105@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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.