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

 

This letter responds to the applicant’s communication filed on 11/2/2004.

 

The amended goods listing is mostly acceptable, but requires further minor revision, as noted specifically below:

 

Class 3 – The general purpose/use of “essential oils” should be specified; e.g., “for general industrial use,” “for personal use.”

 

Class 7 – The wording “turbine units, marine propulsion units” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “turbine engines, not for land vehicles, marine engines,” if accurate.  TMEP §1402.01.

 

Class 9 - The applicant has classified dynamos and alternators in International Class 9.  The correct classification is International Class 7.  The applicant must delete these items from the Class 9 listing; they may be added to the existing International Class 7 listing in the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The applicant has classified “electromotors” in International Class 9.  The correct classification of this item, which must be amended for clarity to “electric motors” is International Class 7 (not for land vehicles) or International Class 12 (for land vehicles).  The applicant must delete this item from the Class 9 listing; it may be added to the existing International Class 7 and/or 12 listing in the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The applicant has classified electric locomotives in International Class 9.  The correct classification is International Class 12.  The applicant must delete this item from the Class 9 listing; it may be added to the existing International Class 12 listing in the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The applicant has classified electric lamps and electric furnaces in International Class 9.  The correct classification is International Class 11.  The applicant must either delete these items or add International Class 11 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

In addition, the explanatory heading “electrical components, namely” should preface the revised listing which remains after the corrections/deletions required above.

 

Class 12 - The wording “motor land vehicles” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  The wording “parts and fittings” in the identification of goods is too broad because it could include items classified in numerous 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.  In the alternative, the general designation “structural parts for motor land vehicles” may be adopted.

 

Amendment is required.  The applicant must again rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

The applicant must adopt the appropriate international classification for the specified goods.  37 C.F.R. §6.1; TMEP §§1401 et seq.  For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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/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.  

 

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 requirements for an acceptably definite and correctly classified identification of goods are repeated and made FINAL.

 

NOTE: If applicant does not respond within six months of the mailing date of this final action, then the specific goods items to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  The application will proceed forward for the remaining goods only.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

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)); 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).

 

Further action awaits response to the above.

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

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.

 

 

 

/David H. Stine/

Trademark Attorney

Law Office 114

(571)272-9229

 

 

How to respond to this Office Action:

 

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.

 

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.