UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/507092
APPLICANT: Tiara International Pty Ltd
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CORRESPONDENT ADDRESS: MARK D. WIECZOREK PO BOX 70072 SAN DIEGO CA 92167
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: TIARA
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CORRESPONDENT’S REFERENCE/DOCKET NO: 00150/002001
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 76/507092
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.
However, several concerns remain to be addressed.
The applicant has identified its goods as “Apparatus for water supply, plumbing fixtures, sanitary apparatus, taps, faucets, valves, showers, shower fittings, showerhead assemblies, bath fittings, filters, mixer taps for water pipes, regulating accessories for water supply, water filtering apparatus, water purifying apparatus, heating apparatus, water heaters, sauna bath installations.”
Concerns regarding the applicant's identification will be addressed seriatim.
“Apparatus for water supply” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods. If accurate the applicant may consider amending its identification to: “plumbing fittings, namely bibs and cocks.”
“Plumbing fixtures” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods. If accurate the applicant may consider amending its identification to “plumbing fixtures, namely sink traps and sink sprayers.”
“Sanitary apparatus” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods. If accurate, the applicant may consider amending its identification to “pipes being part of sanitary facilities.”
“Taps” is unacceptable as indefinite. The applicant must amend its identification to specify a type of tap. If accurate, the applicant may consider amending to “water taps for kitchens and bathrooms.”
“Faucets” is acceptable. However, “valves” is unacceptable. The applicant must amend its identification to specify the function to be performed by the valves. If accurate, the applicant may consider amending its identification to “plumbing fittings, namely valves.”
“Showers” is acceptable. The applicant must amend “shower fittings” to specify the common commercial name of the goods. If accurate, the applicant may consider amending its identification to “shower head sprayers.”
“Showerhead assemblies” is acceptable.
“Bath fittings” is unacceptable. The applicant must amend its identification to clarify the common commercial name of the goods. If accurate, the applicant may consider amending its identification to “bath fittings, namely faucets and showerheads.”
“Filters” is unacceptable because the applicant has failed to specify the use for which the goods are intended. The applicant must so specify. If accurate, the applicant may consider amending its identification to “water filters.”
“Mixer taps for water pipes” is acceptable.
“Regulating accessories for water supply” is unacceptable. The applicant must amend to state the common commercial name of the goods. If accurate, the applicant may consider amending its identification to “ regulating accessories for water supply, namely metered valves, tub control valves and shower control valves.”
“Water filtering apparatus, water purifying apparatus, [and] heating apparatus” is unacceptable because the applicant has used the indefinite term “apparatus.” The applicant must amend its identification to state the common commercial name of the goods. If accurate, the applicant may consider amending its identification to “water filters, water purifiers for domestic use, and portable electric heaters.”
“Water heaters” is acceptable.
“Sauna bath installations” is acceptable.
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. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
John T. Lincoski /JTL/
Trademark Attorney
Law Office 113
(703)308-9113 ext. 286
John.Lincoski@USPTO.GOV