UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/519313 APPLICANT: Edwards Systems Technology, Inc. | *76519313* |
| CORRESPONDENT ADDRESS: JOHN H. WEBER BAKER & HOSTETLER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVENUE, N.W. WASHINGTON, D.C. 20036-5304 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 |
| MARK: ONELIGHT | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 87321-139 CORRESPONDENT EMAIL ADDRESS: | 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. |
Serial Number 76/519313
This Office action responds to applicant’s argument and amendment filed May 26, 2004. The refusal under Section 2(d) has been withdrawn; the only remaining issues deal with the identification of goods and classifications regarding those goods.
The identification of goods is unacceptable because it still contains items that are indefinite or improperly classified, or both. The applicant must amend the identification to specify the common commercial name of all the goods. If there is no common commercial name, the applicant must describe the product and its intended uses. TMEP §1402.01.
Because the applicant did not specify a class in its identification, the Trademark Office classified all the goods in Class 9 originally. Some of the goods may actually be in class 9, but the entire identification is still indefinite, so there is no certainty of the class. However, suggestions are made below to aid applicant in classifying the goods properly.
“Warning lights” may either be “emergency warning lights” in Class 9 or “oscillating vehicle warning lights” in Class 11. “Signal lights” may either be “traffic signal lights” in Class 9 or “vehicle turn signal lights” in Class 11. “Status indicator lights” may be changed to “land vehicle running lights” in Class 11, if accurate. Otherwise applicant may give some other specific wording to this identification and place it in the proper class.
Applicant may limit the identification to a single class or add the extra classes as discussed below.
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 or services that are not within the scope of the goods and services recited in the present identification.
Applicant also may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification at the site listed below.
http://www.uspto.gov/web/offices/tac/doc/gsmanual/
The examining attorney may also be contacted at the telephone numbers below for further consultation regarding the identification.
The requirement for a proper identification is affirmed and made final.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 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.
Proper Response to Final Action
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
/Paul F. Gast/
Paul F. Gast
Examining Attorney, L. O. 106
(703) 435-3391 direct
(703) 308-9106 ext. 297 alternate
(703) 746-8106 LO 106
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.