Offc Action Outgoing

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  76/555874

 

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. §1052(d).  TMEP §704.02.

 

If the applicant is the owner of Registration Nos. 2,329,080; 1,289, 973; 1,255,662 and others, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

The current listing of goods is unacceptable due to the use of indefinite and vague terminology.  The listing as filed is reproduced below.  Unacceptable wording is highlighted in bold with suggestions for revision following, where possible.  Amendment is required:

 

Class 1 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry (specific chemicals, as well as particular use/application must be specified); artificial and natural manures; fire extinguishing compositions; chemical tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances (add “for use in the manufacture of leather”); adhesives used in industry (amend to “adhesives for general industrial use”)

 

Class 3 - Substances for laundry use (specify particular item; e.g. detergent, bluing, bleach); cleaning, polishing, scouring and abrasive preparations (add purpose/use, or specify “for general use”); soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrice

 

Class 4 - Industrial oils and greases (excluding edible oils and greases and essential oils); lubricants (amend to “general purpose industrial oils and greases” – NOTE: parenthetical notation should not be used ); dust absorbing preparations (amend to “petroleum-based dust absorbing preparations for_________(specify)”, fuels (including motor spirit) and illuminants (list specific items by common commercial name); candles, night lights (misclassified – Class 11 – must be deleted from Class 4 list) and wicks for lighting (amend to “wicks for oil lamps and candles”)

 

Class 6 - Raw and semi-manufactured common metals and their alloys (add “sold in _______(specify sheet, billet, ingot, etc.) form); anchors (amend to “marine anchors” or “metal anchors for________(specify)), anvils, bells (amend to “metal bells”), rolled and cast building materials (must specify “of metal”); railway tracks and other materials (indefinite – specify; may include items outside Class 6) of metal for railways; chains (except tractor chains for vehicles) (amend to “metal chains, except traction chains for vehicle tires”); non electric cables and wires (must specify “metal”); door frames (must specify “metal”); metallic tubes; safes (specify “metal”); balls of steel (indefinite, and may include items such as ball bearings (Class 7) - specify; horseshoes; nails and screws (specify “metal”); other goods of metal (not precious) not comprised in other classes (indefinite – specify by common commercial name); ores (amend to “semi-processed metal ores”)

 

Class 7 - Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural big instruments; incubators (unacceptable in its entirety – the following revised listing is suggested: Machines and machine tools, namely__________(specify by common commercial name; e.g. lathes, milling machines); electric motors and internal combustion engines, not for land vehicles; machine couplings and transmissions and parts thereof; agricultural machines, namely__________(specify; e.g. combines, harvesters.  NOTE: Tractors are Class 12); incubators for eggs;

 

Class 9 - Scientific, nautical, surveying, electric (included radio), photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; coin-operated automatic apparatus; speaking machines; cash registers; calculating machines;fire extinguishing apparatus (all highlighted matter is unacceptably indefinite terminology from the International Class heading; Applicant must clarify the wording used to describe the goods and/or services to indicate the common commercial or generic name for each product or service.  In the present case, applicant used the headings of the international classes as the identification of the goods and/or services.  These headings are meant to indicate only the general subject matter and scope of each of the classes of goods and/or services.  While such broad designations may be sufficient under the trademark laws and practice of many countries, the U.S. Patent and Trademark Office considers them too broad to identify the goods or services in a United States application.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01 and 1402.01(a).  Specific items must be listed by common commercial name.)

 

Class 12 - Vehicles; apparatus for locomotion by land, air or water (unacceptable in its entirety – see above re: Class heading language.  Specific items must be listed by common commercial name.)

 

Amendment is required.  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).

 

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.

 

If the applicant elects to add items of goods which are within the scope of the current listing, but properly classified in classes not currently included, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services 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/services 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.  

 

Further action awaits response to the above.

 

 

 

 

 

 

 

 

 

 

/David H. Stine/

Trademark Attorney

Law Office 114

(703)308-9114 x154

 

 

 

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 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.