UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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  76/503647

 

This letter responds to the applicant’s communication filed on September 24, 2003.

 

Identification / Classification of the Goods

In the applicant’s response, the applicant has amended the identification of the goods to list a wide variety of goods classified in International Class 9.  The applicant has listed these goods using acceptable language.  However, the applicant also specifically states that the applicant cannot identify the “goods in question” because “there is no common commercial name for the product, it is a measuring, judging and coaching apparatus for sporting events.” The wording in the identification of goods is thus unacceptable as indefinite and overly broad since the identification could refer to goods properly classified in more than one class. 

 

The applicant must amend the identification to specify the commercial name of the goods on which the applicant is using/intends to use the mark.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.   The applicant may adopt the following amended wording, if accurate:

 

·        Measuring, judging and coaching apparatus for sporting events, namely, photo-electric finish timing sensors (International Class 9)

 

·        Measuring, judging and coaching apparatus for sporting events, namely, stop watches (International Class 14)

 

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.

 

For the applicant’s assistance and convenience,  the examining attorney notes that the Office maintains a web site containing the Acceptable Identification of Goods and Services Manual, located at www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html. The applicant should use the listings located in this database exactly as worded if possible.  Please note that use by the applicant of parenthesis within an identification of the goods is unacceptable as indefinite.  With regard to those listings in the Office’s database that include terms within parenthesis and/or brackets, the applicant must set forth the term(s) that specifically cover the applicant’s goods or services.  As always, any identification of goods or recitation of services the applicant chooses to adopt should 1) accurately describe the applicant’s goods or services; 2) be placed in the correct class of goods or services; and 3) list only those goods or services within the scope of those included in the original application.

 

The application identifies goods that may be classified in more than one international class.  Therefore, the 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 §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

Significance Inquiry

The applicant states in its response that the word “THELICK … has no geographical significance or any meaning in a foreign language.”  The applicant’s response is insufficient. The applicant must also indicate whether the wording “THELICK” or “THE LICK” has any significance as applied to the goods or in the relevant trade or industry.

 

Other Issues

All other issues have been resolved.

 

Response Guidelines

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). 

 

 

/tfletch/

Tracy L. Fletcher

Examining Attorney

Law Office 115

Phone:  (703) 308-9115 ext. 205

Facsimile:  (703) 872-9875

 

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.