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  76/526305

 

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

 

SEARCH OF THE RECORDS

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.

 

IDENTIFICATION OF GOODS

The identification of goods is unacceptable because the precise nature of the goods is not clear from the present wording.  The applicant must clarify the FUNCTION of the software using common commercial names.  See requirements below in bold.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

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. Section 2.71(a); TMEP section 804.09.  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 may adopt the following identification, if accurate: 

 

International Class 9:  Electrical panel controllers used for factory automation and computer software application for use in [IDENTIFY the function of the software using common commercial names.  CLARIFY what is meant by “display programming application computer software.”  What does the software do?]

 

TMEP §1402.01.

 

SECTION 44(D) PRESUMED TO BE SOLE BASIS

Applicant has claimed priority under Section 44(d), 15 U.S.C. §1126(d), as the basis for filing; and this Office presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the United States. TMEP §§806.01(c) and 1003.03.  Under such circumstances, the application may not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 et seq.

 

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

 

 

//tmg//

Tonja M. Gaskins

Trademark Examining Attorney

Law Office 112

(703) 308-9112, ext. 198

ecom112@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.