UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/496296
APPLICANT: Minova International Limited
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MINOVA
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CORRESPONDENT’S REFERENCE/DOCKET NO: Barker 828 (
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/496296
This letter responds to the applicant’s communication that was filed on February 27, 2004. In its communication, the applicant (1) proposed an amended identification of goods and services, (2) provided clarification regarding the entity designation, (3) responded to the inquiry regarding the significance of the mark, (4) provided a certified copy of its foreign registration, and (5) requested that the Section 1(b) filing basis be deleted.
The applicant is advised that Nos. 2, 3, 4, and 5 are acceptable. However, the proposed amended identification of goods and services is not acceptable because it contains indefinite wording and because it designates goods that are broader in scope than the identification set forth in both the original application and the foreign registration. Therefore, the requirement for clarification of the identification of goods and services, made pursuant to TMEP §1402.01, is maintained and continued.
The wording “waterproofing chemical compositions for building and/or construction surfaces, including articles of masonry, wood, rock and coal and for use in mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable as indefinite because the exact nature of the goods is not clear. The applicant may amend this wording to “waterproofing chemical compositions for use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction on articles of masonry, wood, rock, coal, and other building and/or construction surfaces in International Class 1,” if accurate. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "unprocessed acrylic resins" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the goods listed in International Class 1 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “unprocessed acrylic resins for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 1,” if accurate. TMEP §1402.01.
The wording “dispersants for general use in the fields of mining, tunneling, rock engineering, building, civil engineering, and construction” in the identification of is unacceptable as indefinite. The applicant must specify the use of the dispersants. The applicant may amend this wording to “dispersants for general industrial use in the fields of mining, tunneling, rock engineering, ground consolidation, building, civil engineering, and construction in International Class 1,” if accurate. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "chemicals for treatment of aggregates" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the goods listed in International Class 1 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “chemicals for the treatment of aggregates for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 1,” if accurate. TMEP §1402.01.
The wording “damp resisting and water proofing compositions for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction;” in the identification is unacceptable as indefinite. The applicant must be more specific with regard to the type of “compositions” that it provides. The applicant may amend this wording to “damp resisting and water proofing chemical compositions for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 1,” if accurate. TMEP §1402.01.
The applicant is advised that the rest of the amended identification in International Class 1 is acceptable as written.
The wording “metal bolts and metal rods (threaded and unthreaded) for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must clarify the exact nature of the unthreaded metal rods. In addition, the applicant must be more specific with regard to what it means by ground consolidation. Furthermore, applicant must remove the parentheses from the identification and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12. The applicant may amend this wording to any of the following identifications, if accurate: (1) metal bolts and threaded metal rods, all for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 6, and/or (2) unthreaded metal rods for brazing and welding for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 6. TMEP §1402.01.
The wording “stabilizers and reinforcing structural supports, namely metal bars, bolts, screws and rods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must amend the identification of goods to specify the common commercial name of the stabilizers. In addition, the applicant must be more specific with regard to the material composition of the bolts, screws, and rods. The applicant may amend this wording to “stabilizers, namely, [list the common commercial name of the stabilizers, e.g., metal bars, metal bolts] for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction and reinforcing structural supports, namely metal bars, metal bolts, metal screws and metal rods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 6,” if accurate. TMEP §1402.01.
The applicant is advised that the rest of the amended identification in International Class 6 is acceptable as written.
The proposed amendment to the identification cannot be accepted because the wording "machinery, namely power-operated pumps; pumping machines and compressors for applying products, cements, cementitious compounds, resins, resinous compounds, chemical compounds or fluids to ground or building surfaces and parts therefore" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. In addition, it is not clear what the applicant means by “products.” 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. The original identification and the identification in the foreign registration limit all the goods listed in International Class 7 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “machinery, namely power-operated pumps; pumping machines and compressors for applying cements, cementitious compounds, resins, resinous compounds, chemical compounds or fluids to ground or building surfaces and parts therefore, all of the aforesaid goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 7,” if accurate. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "machinery, namely power-operated pumps; pumping machines and compressors for injecting products, cements, cementitious compounds, resins, resinous compounds, chemical compounds or fluids into ground or building surfaces and parts therefore" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. In addition, it is not clear what the applicant means by “products.” 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 7 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “machinery, namely power-operated pumps; pumping machines and compressors for injecting cements, cementitious compounds, resins, resinous compounds, chemical compounds or fluids into ground or building surfaces and parts therefore, all of the aforesaid goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 7,” if accurate. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "roof bolting machines" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 7 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “roof bolting machines for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 7,” if accurate. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording " machines for inserting bolts into rock and ground and parts therefore" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 7 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “machines for inserting bolts into rock and ground and parts therefore for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 7,” if accurate. TMEP §1402.01.
The applicant is advised that the rest of the amended identification in International Class 7 is acceptable as written.
The wording “sealants for rock faces and for mined surfaces” in the identification is unacceptable because it is too broad. It could include goods that are classified in other classes. The applicant must specify the type of sealants that it provides. The applicant may amend this wording to any of the following identifications, if accurate: (1) adhesive sealants for rock faces and for mined surfaces in International Class 17, and/or (2) bitumen-based sealants for rock faces and for mined surfaces in International Class 19. TMEP §1402.01.
The wording “sealants . . . for sealing, filling, masking, reinforcing, packing or caulking use in mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable because it is too broad. It could include goods that are classified in other classes. The applicant may amend this wording to “rubber sealant for sealing, filling, masking, reinforcing, packing or caulking use in mining, tunneling, rock engineering, building, civil engineering and construction in International Class 37,” if accurate. TMEP §1402.01.
The wording “cavity fillers . . . for sealing, filling, masking, reinforcing, packing or caulking use in mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The wording “resins, resinous powders and resinous compounds for use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction” in the identification of is unacceptable because it is indefinite and too broad. It could include goods that are classified in other classes. The applicant must be more specific with regard to what it means by “resinous powders and resinous compounds.” The applicant may amend this wording to any of the following identifications, if accurate: (1) synthetic resins for use in the manufacture of molding compounds for use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 1, (2) synthetic resin powder for use in the manufacture of molding compounds for use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 1, (3) resins in bars, blocks, pellets, rods, sheets and tubes for general industrial use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 17, and/or (4) resins in extruded form for general industrial use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 17. TMEP §1402.01.
The wording “resins, resinous powders and resinous compounds for use in ground stabilisation and support in the fields of mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must be more specific with regard to what it means by “resinous powders and resinous compounds.” The applicant may amend this wording to any of the following identifications, if accurate: (1) resins in bars, blocks, pellets, rods, sheets and tubes for use in ground stabilization and support in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 17, and/or (2) resins in extruded form for use in ground stabilization and support in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 17. TMEP §1402.01.
The wording “resins, resinous powders and resinous compounds, all in capsule form for use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must be more specific with regard to what it means by “resinous powders and resinous compounds, all in capsule form.” The applicant may amend this wording to any of the following identifications, if accurate: (1) (3) resins in capsule form for general industrial use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction in International Class 17. TMEP §1402.01.
The wording “resins, resinous powders and resinous compounds, all for injection into cavities and for use in the fields of mining, tunneling, rock engineering, building, civil engineering and construction;” in the identification is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The wording “resin based membranes for ground support and strengthening for use in mining, roofing, tunneling, rock engineering, building, civil engineering and construction;” in the identification is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording " non-metallic ventilation ducts for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction;" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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.
The wording “resin foams for cavity filling;” in the identification is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "non-metallic ventilation seals for use in mining, roofing, tunneling, rock engineering, building, civil engineering and construction" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration were limited to cement based ventilation seals. Therefore, this wording should be deleted from the identification. In the alternative,
The wording “industrial . . . hoses for the passing of air, liquid or liquid compounds, for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction” in the identification of goods is unacceptable as indefinite. The applicant must specify whether the industrial hoses are made of rubber or plastic. The applicant may amend this wording to any of the following identifications, if accurate: (1) rubber industrial hoses for the passing of air, liquid or liquid compounds, for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 17, and/or (2) plastic industrial hoses for the passing of air, liquid or liquid compounds, for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 17. TMEP §1402.01.
The applicant is advised that the rest of the amended identification in International Class 17 is acceptable as written.
The proposed amendment to the identification cannot be accepted because the wording "grouts, resinous grouts and cementitious grouts" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “grouts, resinous grouts and cementitious grouts for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01.
The wording “concrete based compounds for use in mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable because it is indefinite and too broad. It could include goods that are classified in other international classes. The applicant must clarify what it means by “concrete based compounds. The applicant may amend this wording to any of the following identifications, if accurate: (1) rapid cure, high strength polymer based concrete patching compound for use in mining, tunneling, rock engineering, building, civil engineering and construction in International Class 17, and/or (2) tar-based concrete patching compound for use in mining, tunneling, rock engineering, building, civil engineering and construction in International Class 19. TMEP §1402.01.
The applicant has classified contact cements for use in mining, tunneling, rock engineering, building, civil engineering and construction in International Class 19. The correct classification is International Class 1. The applicant must amend the application to classify these goods in International Class 1. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The wording “cement based compounds . . . for reinforcement and adhesion, all for use in mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable because it is indefinite and too broad. It could include goods that are classified in other classes. The applicant must be more specific with regard to what it means by “cement based compounds.” TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "cementitious and resinous grouts" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “ cementitious and resinous grouts for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The proposed amendment to the identification cannot be accepted because the wording "cementitious and resinous grouts and cartridge form" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “ cementitious and resinous grouts in cartridge form for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The proposed amendment to the identification cannot be accepted because the wording "cementitious and resinous grouts in capsule form" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “ cementitious and resinous grouts in capsule form for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The wording “cement based membranes for ground support and strengthening for use in mining, roofing, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must clarify what it means by “cement based membranes.” The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The wording “waterproofing coatings in the nature of cementitious, grout and/or resinous compounds for use in mining, tunneling, rock engineering, building, civil engineering and construction” in the identification is unacceptable as indefinite. The applicant must clarify what it means by “cementitious, grout and/or resinous compounds.” The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The proposed amendment to the identification cannot be accepted because the wording "cements and grouts for anchoring" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” In the alternative, the applicant may amend this wording to “ cements and grouts for anchoring for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The proposed amendment to the identification cannot be accepted because the wording "resinous anchoring grouts" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “resinous anchoring grouts for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The proposed amendment to the identification cannot be accepted because the wording "sprayable and foamed concrete" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “sprayable and foamed concrete for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The proposed amendment to the identification cannot be accepted because the wording "cement foams for cavity filling" refers to goods that are indefinite and goods that are not within the scope of the identification that was set forth in the application at the time of filing and that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the goods listed in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “premixed adhesive foam cements for cavity filling for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 1,” if accurate. TMEP §1402.01. Please note that the suggested goods are classified in International Class 1.
The proposed amendment to the identification cannot be accepted because the wording "cement based ventilation seals" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “ cement based ventilation seals for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The proposed amendment to the identification cannot be accepted because the wording "fireproof cement coatings" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and goods that are not within the scope of the foreign registration. 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. The original identification and the identification in the foreign registration limit all the listed goods in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” The applicant may amend this wording to “fireproof cement coatings for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction in International Class 19,” if accurate. TMEP §1402.01
The wording “cements and cement based compounds for repair work for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction” in the identification is unacceptable because it is indefinite and too broad. It could include items classified in other classes. The applicant must specify the type of cement and cement based compounds that it provides. The applicant may this wording to any of the following identifications, if accurate: hydraulic cement for repair work for use in mining, tunneling, rock engineering, building, civil engineering, and construction in International Class 19, and/or (2) contact cement for repair work for use in mining, tunneling, rock engineering, building, civil engineering, and construction in International Class 1. TMEP §§1402.01 and 1402.03.
The proposed amendment to the identification cannot be accepted because the wording "intumescent coatings to prevent fire spread" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing and that are not within the scope of the foreign registration. In addition, this wording is unacceptable as indefinite. TMEP §1402.01. 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. The original identification and the identification in the foreign registration limit all the goods listed in International Class 19 to “goods for use in mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.” Therefore, this wording should be deleted from the identification. In the alternative, the applicant must specify the common commercial name of the product and limit its use to the fields of mining, tunneling, rock engineering, ground consolidation, building, civil engineering and construction.
The applicant has classified chemical compounds, namely fire proofing, fire retardant and fire extinguishing compounds for use in mining, tunneling, rock engineering, building, civil engineering and construction in International Class 19. The correct classification is International Class 1. Therefore, the applicant must amend the application to classify these goods in International Class 1. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The applicant is advised that the rest of the amended identification in International Class 19 is acceptable as written.
The wording “project management in the fields of mining, tunneling, rock engineering, building and civil engineering” in the identification is unacceptable because it is too broad. It could include services that are classified in other classes. The applicant may amend this wording to “construction project management in the fields of mining, tunneling, rock engineering, building and civil engineering in International Class 37,” if accurate. TMEP §1402.01.
The wording “site and works supervision and management in the fields of mining, tunneling, rock engineering, building and civil engineering in International Class 37” in the identification is unacceptable because it is indefinite and too broad. It could include services that are classified in other classes. The applicant may amend this wording to “construction supervision and construction management in the fields of mining, tunneling, rock engineering, building and civil engineering in International Class 37,” if accurate. TMEP §1402.01.
The wording “hire of construction equipment, mining equipment, power-operated pumps, power-operated pumping machines, compressors, bolting machines, mixing machines and spraying machines used in relation to mining, tunneling, rock engineering, building and civil engineering and construction” in the identification of services is unacceptable as indefinite. The applicant may amend this wording to “rental of construction equipment, mining equipment, power-operated pumps, power-operated pumping machines, compressors, bolting machines, mixing machines and spraying machines used in relation to mining, tunneling, rock engineering, building and civil engineering and construction in International Class 37,” if accurate. TMEP §1402.01.
The applicant has classified consultation, advice and provision of information in the field of mining in International Class 37. The correct classification is International Class 42. The applicant must either delete consultation, advice and provision of information in the field of mining or add International Class 42 to the application and pay the appropriate filing fee. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The wording “consultation, advice and provision of information in the field of . . . tunneling works ” in the identification is unacceptable as indefinite. The applicant may amend this wording to “consultation, advice and provision of information in the field of excavation services, namely, tunneling in International Class 37,” if accurate. TMEP §1402.11.
The applicant has classified consultation, advice and provision of information in the field of rock engineering and consultation, advice and provision of information in the field of civil engineering in International Class 37. The correct classification for these services is International Class 42. The applicant must either delete consultation, advice and provision of information in the field of rock engineering and consultation, advice and provision of information in the field of civil engineering in International Class 37 or add International Class 42 to the application and pay the appropriate filing fee. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The wording “consultation, advice and information in relation to strata control, strata support, cavity filling, ventilation, backfill consolidation and prevention of water ingress in the fields of mining; tunneling, rock engineering, building and civil engineering” in the identification is unacceptable because it is indefinite and too broad. It could include services that are classified in other classes. The applicant may amend this wording to “consultation, advice and information in relation to mining excavation on the subject of strata control, strata support, cavity filling, ventilation, backfill consolidation and prevention of water ingress in the fields of mining; tunneling, rock engineering, building and civil engineering in International Class 37,” if accurate. TMEP §1402.01.
The applicant is advised that the rest of the amended identification in International Class 37 is acceptable as written.
Requirements for a Multiple Class Application
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
Failure to Respond – Abandonment of Specific Goods and Services
If applicant should fail to respond to this Office action within the six month time limit, then the goods and services discussed in the above Office Action will be deleted from the application. The application will then proceed forward for the remaining goods and services that were not discussed in the above Office Action. 37 C.F.R. §2.65(a).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
Amy Lohr /acl/
Trademark Attorney
L.O. 112
[voice mail] (571) 272-9413
[fax] (571) 273-9112
http://www.gov.uspto.report/teas/index.html (file responses)
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.