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

 

            This letter responds to the applicant's communication filed on April 2, 2004.

 

            In said response, the applicant provided a foreign certificate of registration, amended the identification of goods and services and responded to a general inquiry re: GTO.  The foreign certificate of registration and the response to the general inquiry are accepted and made of record.  However, the amended identification of goods and recitation of services indefinite and must be amended.

 

              In the initial office action, the applicant was advised of two prior pending applications that potential could develop into a 2(d) refusal.  Based upon the amendments to the identification of goods, the examining attorney withdraws the potential 2(d) refusal.

 

            For the reasons stated below, the requirements to amend the identification of goods and recitation of services are now made FINAL.

 

 

 

FINAL REFUSAL – IDENTIFICATION OF GOODS

 

Class 7

 

               The wording “PUMPS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Class 7__________ [specify the type of pumps, e.g. bilge, swimming pool, aquarium, rotary, etc.] pumps,” if accurate.  TMEP §1402.01.

 

              The wording “CUTTER HEADS” 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 “SEDIMENT DISINTEGRATION TOOLS, DRILLS, AND HYDRAULIC HAMMERS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Class 7 – sediment disintegration tools, namely, _________ [specify the tools by their common commercial names] ___________ [specify the type of drills by their common commercial names, e.g. power drills] drills, and hydraulic power-operated hammers,” if accurate.  TMEP §1402.01.

 

               The wording “HYDRAULIC APPARATUS, NAMELY DREDGES, PIPLELINE SYSTEM FOR SEDIMENT TRANSPORT AND REMOVAL, SUCTION HEADS AND EJECTORS FOR HANDLING, DISINTERGRATION, EXCAVATION, SHIFTING OR REMOVAL OF SOLID MATERIAL AND SEDIMENT IN WATER, AND TRANSPORT OF SEDIMENT BY WASTER THROUGH PIPLINES AND IN FLUMES” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Class 7 – hydraulic apparatus COMPRISED OF ______________ specify the major components of the apparatus] dredges, pipeline system COMPRISED OF OF ______________ [specify the major components of the pipelines] for sediment transport and removal, and suction heads and ejectors, namely ____________ [specify the name of the ejectors by their common commercial name] for handling, disintegration, excavation, shifting or removal of solid material and sediment in water, and transport of sediment by water through pipelines and in flumes ,” if accurate.  TMEP §1402.01.

 

Class 9

 

               The wording “ELECTRICAL AND ELECTRONIC APPARATUS AND INSTRUMENTS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Class 9 – electrical and electronic instruments, namely, _____________ [specify the electrical and electronic instruments by their common commercial names]; and electronic apparatus, COMPRISED of ______________ [specify the major components of the apparatus] for _____________ [specify the purpose of the apparatus],” if accurate.  TMEP §1402.01.

 

               The wording “DENSITY METERS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “density meters for measuring __________ [specify the purpose of the density meters, e.g. for measuring density of rock],” if accurate.  TMEP §1402.01.

 

                The wording “ABRASION MEASUREMENT DEVICES” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “abrasion measurement devices, namely, _______________ [specify the devices by their common commercial names],” if accurate.  TMEP §1402.01.

 

                The wording “VELOCITY AND LOW METERS” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “velocity and flow meters for _____________ [state the purpose of the meters, e.g. for measure the velocity and flow of sediment, or water],” if accurate.  TMEP §1402.01.

 

             In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP §§1402.03(a) and 1402.11.

 

            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/.

 

            The examining attorney herein makes FINAL his refusal with respect to this issue.

CLASSIFICATION GOODS

 

             The applicant has classified CRAWLERS incorrectly.  The applicant must amend the application to classify the goods in International Class 7.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

RECITATION OF SERVICES

 

Class 37

 

              The wording in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “Class 37 – construction and repair of_________________ [specify the items to be constructed and repaired] conducted in and underwater in connection with dredging and sediment handling,” if accurate.  TMEP §1402.11.

 

Class 42

 

                The wording “RESEARCH, SCIENTIFIC AND TECHINCAL SERVICES” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to C lass 42 – scientific research and technical consultation and research in the fields of sediment engineering, sediment transport by water and sedimentation reservoirs,” if accurate.  TMEP §1402.11.

 

            The wording “DEVELOPMENT OFOR OTHERS OF METHODS AND EQUIPMENT FOR THE HANDLING, DISINTEGRATION, EXCAVATION, SHIFTING NAD REMOVAL OF SOLID MATERIAL AND SIDIEMENT IN WATER AND TRANSPORT BY WATER THROUGH PIPELINES AND LUMES” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “Class 42 – research and development for others of equipment for the handling, disintegration, excavation, shifting and removal of solid material and sediment in water and transport by water through pipelines and flumes; and development of new technology for others in the field of removal solid material and sediment in water and transport by water through pipelines and flumes ,” if accurate.  TMEP §1402.11.

 

              In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP §§1402.03(a) and 1402.11.

 

             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 services that are not within the scope of the services recited 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/.

 

OTHER

 

            Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and

Appeal Board.  37 C.F.R. Section 2.64(a).  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. Section 2.65(a).

 

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

 

 

 

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.

 

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.