Offc Action Outgoing

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  76/503090

 

This letter responds to the applicant's communication filed on December 15, 2003.  The applicant (1) amended the identification of goods and recitation of services, (2) deleted Class 40, (3) submitted copy of the foreign registration and (4) deleted Section 1(b).

 

The proposed amendment to the identification of goods, the deletion of Class 40, the deletion of Section 1(b), and the foreign certificate are acceptable.

 

The proposed amendment to the recitation of services and the classification of the services is unacceptable.

 

The requirement to amend the recitation of services and to reclassify the services is continued and made FINAL.

 

Recitation of Services

The proposed amendment to the identification cannot be accepted because the wording "security printing and marking services, namely, branding, inscribing, labeling and encoding valuable documents and products with identification information, namely, security taggants, markings, coatings and compositions, to prevent and/or impede counterfeiting, forgery and fraud" refers to services 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 services may be amended to clarify or limit the 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.

 

Incorrect Classification

The applicant has classified the services in International Class 42.  The correct classification is International Class 45.  The applicant must reclassify the services in International Class 45.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Options

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of 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 the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

 

 

/Alice Benmaman/

Trademark Attorney

Law Office 116

(703) 306-7911

FX: (703) 746-8116

RESPOND AT http://www.gov.uspto.report/teas/index

 

 

 

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.