UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/554831
APPLICANT: Penn Elcom, Inc.
|
|
|
CORRESPONDENT ADDRESS: 10960 WILSHIRE BOULEVARD, SUITE 1220 |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 011
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 76/554831
This letter responds to the Applicant’s communication received July 27, 2004.
The applicant amended the filing basis of the application from Use in Commerce under §1(a) to an Intent to Use basis under §1(b). This amendment is acceptable and has been entered into the record. In light of the applicant’s amendment, the requirement for a substitute specimen is withdrawn.
The applicant was required to make an amendment to the identification of goods in order to make it more definite. The applicant amended the identification of goods, however, the identification still lacks requisite specificity. The requirement that the identification of goods be made more definite is therefore, continued and made final.
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). For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).
The applicant amended the identification of goods to “metal hardware, namely, latches, handles for cases and cabinets, corners for cases and cabinets, braces for cases, extrusions for cases and cabinets, dishes for cases and cabinets, hinges, stays for lids, casters, grilles for speakers, feet for cases and cabinets, screws, nuts, washers, rivets, mounting brackets for speakers, racks for electronic equipment and parts thereof or, boxes and parts therefore, electrical connectors, and trusses for lighting and roof systems and parts therefore.” This amendment is unacceptable for the following reasons.
The wording “corners for cases and cabinets” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the industry or field in which the goods are intended to be used or the type of corner. TMEP §1402.01.
The wording “extrusions for cases and cabinets” and “dishes for cases and cabinets” in the identification of goods is too broad because it could include items classified in other classes. The applicant must amend the identification to list each item by its common commercial name. TMEP §§1401.04(b), 1402.01 and 1402.03.
The wording “racks for electronic equipment and parts thereof” in the identification of goods is too broad because it could include items classified in other classes. The applicant must amend the identification to list each item by its common commercial name. TMEP §§1401.04(b), 1402.01 and 1402.03. The applicant should note that storage racks are generally classified in International Class 20 regardless of material composition. Racks for electronic appliances like amplifiers and loudspeakers are classified in International Class 009.
The applicant may adopt the following identification of goods, if accurate:
International Class 006: Metal hardware and construction elements, namely, latches, handles for cases and cabinets, protective corners for cases and cabinets, braces for cases, hinges, casters, grilles for speak, feet for cases and cabinets, screws, nuts, washers, rivets, mounting brackets for speakers; metal extrusions for cases and cabinets, namely, crack inducers; metal boxes and structural parts therefore; metal roof trusses; metal construction elements, namely, trusses for lighting; metal hardware, namely, stays for lids; metal hardware, namely, dishes for use in with metal connectors for cases and cabinets.
International Class 009: Electrical connectors; metal racks for electronic [specify e.g. stereo] equipment.
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 has paid for one International Class. If an amendment to the identification of goods requires the addition of an International Class to the application, the applicant should note the following.
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 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 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.
In an action dated May 3, 2004 the applicant was advised that the drawing page is unacceptable because it will not reproduce satisfactorily. The applicant submitted a substitute drawing. The substitute-drawing page is unacceptable for the same reason. Therefore, the requirement that the applicant submit a substitute drawing page is maintained and made final.
Special form drawings must be made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp, and solid, and must not be fine or crowded. Gray tones or tints may not be used for surface shading or any other purpose. TMEP §807.07(a).
In this case, as the attached copy demonstrates, the drawing is unacceptable because it is spotted. See attached). Therefore, the applicant must submit a new drawing, without spotting.
The requirements for a special-form drawing are as follows:
· The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.
· Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
· The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.
· If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54.
The Office strictly enforces these drawing requirements.
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)); and/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).
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.
/Toni Y Hickey/
Trademark Examining Attorney
Phone (703) 308-9115 X134
Phone effective 10/21/04 (571) 273-9475
Fax (703) 872-9229