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  76/519469

 

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

 

Search Results

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. §1052(d).  TMEP §704.02.

 

Identification of Goods

The identification of goods is unacceptable as indefinite because the nature of the goods is unclear from the present record. 

 

The applicant may adopt the following identification, if accurate: 

 

“Electrical controllers for computer numerical control motion actuation machines,” in International Class 9.  TMEP §1402.01.

 

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.

 

Classification

The applicant has classified the goods incorrectly.  The applicant must amend the application to classify the goods in International Class 9.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Request for Information Requirement

In order to allow for proper examination of the application, including the final determination as to whether the mark is merely descriptive in relation to the goods/services, the applicant must submit samples of advertisements or promotional materials for the goods/services or, if unavailable, for goods/services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods/services identified in the application.  In addition, the applicant must state whether the mark has any meaning in relation to the goods/services.  37 C.F.R. §2.61(b); TMEP §§1103.04 and 1105.02.

 

Basis for Filing

The applicant has not indicated the basis for the application.  An application may be filed based on any of the following:

 

(1)  use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

 

(2)  a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

 

(3)  a claim of priority, based on an earlier‑filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));

 

(4)  registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)). 

 

The applicant must specify at least one basis for filing and the applicant must submit all of the requirements for the basis asserted.  TMEP §806.  Depending on the circumstances, the applicant may be entitled to assert more than one basis for filing.  In such a case, the applicant must:  (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. §2.34; TMEP §§806.02 et seq.

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

 

 

Specimen

If the application is based on use, the applicant must note that an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services.  TMEP §904.  The application does not contain a specimen.  The applicant must submit a specimen, and must submit the following statement:

 

The specimen was in use in commerce at least as early as the filing date of the application.

 

This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Dates of Use

If the application is based on use, the applicant must note that the application does not set forth the dates of first use of the mark.  The applicant must provide a statement specifying the date of first use of the mark and the date of first use of the mark in commerce.  Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii) and (iii). 

 

The applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

Applicant’s Address

Applicant must indicate its address for the record.

 

Significance of Mark

The applicant must indicate whether the acronym “UMAC” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

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

 

 

 

 

/Naakwama Ankrah/

Trademark Attorney

Law Office 106

(703) 308-9106, ext. 462

(703) 746-8106 (fax)

Ecom106@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.