UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/554478 APPLICANT: Komatsu Zenoah Co. | |
| CORRESPONDENT ADDRESS: WILLIAM BREWSTER KILPATRICK STOCKTON LLP 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GEORGIA 30309-4530 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 |
| MARK: STRATO CHARGED | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 44471/292378 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 76/554478
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.
INFORMALITIES
The wording “fuel” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “fuel oil” or “fuel for (specify),” whichever is accurate. TMEP §1402.01.
The wording “lubricating oil” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “lubricating oil for industrial application.” TMEP §1402.01.
The wording “engines, other than for land vehicles,” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “internal combustion engines for (specify).” TMEP §1402.01.
The wording “pumps” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “pumps (specify type of pump or field of use.) TMEP §1402.01.
The wording “blowing engines” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “blowing engines for machines,” if accurate. TMEP §1402.01.
The wording “agricultural machines” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “Agricultural machines, namely, [indicate specific implements, such as cultivators, harvestors, disk harrows, seeders, etc,” TMEP §1402.01.
The wording “trimmers and brush cutters, sprayers” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “lawn and garden trimmers, brush cutters and sprayers.” TMEP §1402.01.
The wording “blight prevention machine and instruments” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. TMEP §1402.01.
CLASS 21
The wording “tableware (other than knives, forks and spoons) not of precious metal” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the tableware and if the goods do not include “knives, forks and spoons” then those items should be deleted. TMEP §1402.01.
The wording “headgear” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “headwear.” 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 rewrite the identification of goods in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).
It is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d). The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). TMEP Section 1402.01.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 1402.04.
The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual. The Manual is available on the PTO’s “homepage” on the Internet, which can be accessed at http://www.uspto.gov. The Manual may also be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600). See notice at 1190 TMOG 67 (Sept. 17, 1996). In addition, the Manual is available in hard-copy on a subscription basis from the Government Printing Office. TMEP Section 1402.04.
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
DISCLAIMER
The applicant must insert a disclaimer of CHARGED in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use CHARGED apart from the mark as shown.
/Lesley LaMothe/
Trademark Attorney
Law Office 103
703-308-9103 ext 487
e-mail- lesley.lamothe@uspto.gov
fax- 703-746-8103
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.