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  76/512835

 

assigned examining attorney has reviewed the referenced application and determined the following.

SEARCH OF RECORDS

 

           The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  Please note that the examining attorney has found a potentially conflicting pending application.

 

PRIOR PENDING APPLICATION – POTENTIAL REFUSAL OF REGISTRATIONS

 

         The examining attorney encloses information regarding pending Application Serial No. 78116487 and 78116475.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

RIGHT TO RESPOND

 

            If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

INFORMALITIES

 

           Before the application can be considered further, the following informal issues must be addressed.

IDENTIFICATION OF GOODS

 

Class 7

 

            The wording “MACHINES AND MACHINE TOOLS” in the identification of goods 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 “MOTORS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “motors for ___________ [specify, e.g. for boats, for airplanes etc.],” if accurate.  TMEP §1402.01.

 

             The wording “PUMPS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “_________ [specify the type of pumps by their common commercial names, e.g.  sludge pumps, submersible pumps, sump pumps, etc.], pumps” if accurate.  TMEP §1402.01.

 

            The wording “HYDROLIC APARATUS FOR MARINE USE, BELOW OR ABOCVE WATER SURFACE IN CONNECTION TO DAM INSTALLATIONS OR OFFSHORE ACTIVITY” in the identification of goods 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.

 

CLASS 9

 

             The wording “ELECTRIC APPARATUS AND INSTRUMENTS” in the identification of goods 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.

 

Class 12

 

             The wording “VEHICLES” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Class 12 – vehicles, namely, ______________ [specify by \common commercial names, e.g. automobiles, pick-up trucks , etc.],” if accurate.  TMEP §1402.01.

 

             The wording “APPARATUS FOR LOCOMOTION BY WATER AND SEABED” in the identification of goods 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.

 

Class 37

 

              The wording “BUILDING CONSTRUCTION^” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “construction of buildings,” if accurate.  TMEP §1402.11.

 

             The wording “REPAIR” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “Class 37 - __________ [specify by common commercial name the type of repair, e.g. clothing] repair,” if accurate.  TMEP §1402.11.

 

             The wording “INSTALLATION SERVICES” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “Class 37 – installation of  __________ [specify the installation services by their common commercial names, e.g. kitchen appliances],” if accurate.  TMEP §1402.11.

 

Class 42

 

             The wording “SCIENTIFIC AND TECHNOLOGICAL SERVICES” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

            The wording “RESEARCH” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “_________________ [specify the type of research by their common commercial names research,” if accurate.  TMEP §1402.11.

 

             The wording “DEVLOPMENT” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

             In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

              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 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/.

 

FOREIGN CERTIFICATE REQUIRED

 

             If the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

             If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).

 

GENERAL INQUIRY

 

            The applicant must indicate whether GTO has any significance in the relevant trade.  37 C.F.R. Section 2.61(b).

 

NOTE:

 

            If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

ecom108@uspto.gov

 

 

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.