UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/500985
APPLICANT: Steel Equipment Specialists, LLC
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*76500985* |
CORRESPONDENT ADDRESS: STEEL EQUIPMENT SPECIALISTS, LLC 1507 BEESON STREET ALLIANCE, OH 44601
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: SES
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CORRESPONDENT’S REFERENCE/DOCKET NO: 117090-4
CORRESPONDENT EMAIL ADDRESS:
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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 76/500985
The assigned examining attorney has further reviewed the referenced application and determined the following. The examining attorney apologizes for failing to address this issue in the first action.
The wording “inspection processing equipment for inspection and processing of metal, including length measuring equipment and product identification equipment” in the identification of goods needs clarification because it is indefinite and encompasses goods in more than one class. Applicant may adopt any portion of the following identification that is accurate:
Inspection processing equipment for inspection and processing of metal, namely, [specify common commercial name(s) of product identification equipment, e.g., printing plates, printing rollers], in Class 7; and/or
Inspection processing equipment for inspection and processing of metal, namely, [specify common commercial name(s) of length measuring equipment, e.g., lasers for measuring purposes] and [specify common commercial name(s) of product identification equipment, e.g., laser scanners for industrial inspection], in 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.
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class(es).
Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(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.
(3) Applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and
(c) both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda M. King/
Trademark Attorney
Law Office 116
703-306-7907
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 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.