UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/521767
APPLICANT: Schaeffer Manufacturing Company
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CORRESPONDENT ADDRESS: CASPER SCOTT YOST HERZOG, CREBS & MCGHEE, LLP ONE CITY CENTRE, 24TH FLOOR 515 NORTH 6TH STREET ST. LOUIS MO 63101 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom116@uspto.gov
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MARK: MICRO SHIELD
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CORRESPONDENT’S REFERENCE/DOCKET NO: 5912-017
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 76/521767
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.
The identification of goods is unacceptable as indefinite because the nature of the lubricants is unclear. The applicant must specify the type of lubricants. The applicant may adopt the following identification, if accurate:
“Automotive lubricants” in Class 4;
“Industrial lubricants” in Class 4. 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.
The applicant must disclaim the descriptive wording "SHIELD" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because the lubricants provide a protective covering, or shield. A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use SHIELD apart from the mark as shown.
Applicant’s claim of ownership of U.S. Registration Nos. 1115127, 1228094, 1229099, 1369750 and 1634620 will not be printed on any registration that may issue from this application because the marks are different. Only prior registrations for the same or similar marks are considered related registrations for purposes of an ownership claim. 37 C.F.R. §2.36; TMEP §812.
/Michele-Lynn Swain/
Examining Attorney, LO 116
PH(703) 306-7926
FX(703) 746-8116
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.