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  76/571494

 

This letter responds to the applicant's communication filed on Feb. 23, 2005.

 

The refusal under Trademark Act Section 2(d) and the reference to application Serial No. 78/335658 as a potential bar under Section 2(d) are maintained pending either: (a) recordation of assignment of the cited marks to the applicant’s parent company, or (b) submission of a statement that the applicant owns all or substantially all of the cited marks, or that the owner of the cited marks owns all or substantially all of the applicant.

 

The signed declaration, disclaimer, and color claim and description of the mark are accepted.  The requirement for a disclaimer of WWW.SIGA.CH is withdrawn.

 

Identification and Classification of Goods and Services

 

The identification of goods and services is unacceptable because it contains wording that is indefinite, or that may identify goods and/or services in more than one international class.  TMEP sections 1402 and 1402.03.  The applicant may adopt the identifications suggested below, if accurate.  (Items not mentioned below are acceptable in their current form.)

 

International Class 1

 

Unacceptable wording: Chemicals used in … agriculture, horticulture and forestry

Suggested amendment: Specify particular types of chemicals, e.g., “Chemical preparations for use in, horticulture and forestry, namely, chemical preparations for the treatment of seeds.”

 

Unacceptable wording: adhesives used in industry

Suggested amendment: indicate specific industry or indicate that goods are adhesives for general industrial use, if accurate.

 

International Class 8

 

Unacceptable wording: hand tools and implements (hand-operated) for industrial purposes, particularly unwinding devices for self-adhesive tape

Suggested amendment: hand tools and hand-operated implements for industrial purposes, namely, unwinding devices for self-adhesive tape

 

International Class 16

 

Unacceptable wording: paper, … goods made from these materials, not included in other classes; printed matter; bookbinding material; instructional and teaching material (except apparatus)

Suggested amendment: specify types of paper, e.g., bond paper, copier paper; specify types of printed matter, e.g., newspapers, books, magazines, and their subject matter; bookbindings; printed instructional and teaching materials in the field of [specify subject matter].

 

International Class 17

 

Unacceptable wording: gutta-percha, gum, mica and goods made from these materials, not included in other classes; plastics in extruded form for use in manufacture; sealing mass, particularly sealing mass for joint sealing in parts of a structure (inside and outside); sealing materials, packaging materials or isolation materials, particularly adhesive tape, sealing sheets, self-adhesive sealing foils and joint bands for the hobby, sport and recreational sector, as well as for household purposes, particularly for the laying and agglutination of materials for covering existing floors on floors and for the installation of skirting boards as well as for the agglutination of foil in parts of a structure (inside and outside)

Suggested amendment: gutta-percha, gum, mica; aerosol foam sealant for use in connection with residential and commercial construction projects; sealing materials, packaging materials or isolation materials, namely, adhesive tape for industrial or commercial use; sealing materials, packaging materials or isolation materials, namely, [specify types of materials, e.g., adhesive sealants], for the laying and agglutination of materials for covering existing floors on floors and for the installation of skirting boards as well as for the agglutination of foil in interior and exterior parts of a structure, in International Class 17; sealing sheets, self-adhesive sealing foils and joint bands for the hobby, sport and recreational sector, as well as for household purposes, in International Class 16.

 

International Class 27

 

Unacceptable wording: carpets, rugs, mats and matting, linoleum and other materials for covering existing floors

Suggested amendment: delete “and other materials” or specify particular types of materials.

 

International Class 37

 

Unacceptable wording: building construction and repair, particularly renovation of buildings, mainly in the way of insulation and joint sealing in parts of a structure, installation of skirting boards, agglutination of foil in parts of a structure (inside and outside) including corresponding consultancy services for third parties; laying and agglutination of removable materials for covering existing floors on floors as well as of self adhesive skirting boards and joint tapes

Suggested amendment: building construction and repair, particularly renovation of buildings, mainly in the way of insulation and joint sealing in parts of a structure, installation of skirting boards, agglutination of foil in interior and exterior parts of a structure; consultancy services for third parties in the field of building construction, repair and renovation; laying and agglutination of removable materials for covering existing floors on floors as well as of self adhesive skirting boards and joint tapes.

 

International Class 41

 

Unacceptable wording: instruction, education and advanced training

Suggested amendment: instruction, training and educational services, namely, conducting courses in the field of [specify field]

 

Unacceptable wording: release and publication

Suggested amendment: delete “release and.”

 

Unacceptable wording: organization and processing of seminars and information events about the use of the aforesaid goods for industrial and promotional purposes…

Suggested amendment: organization of seminars and events for promotional purposes is classified in International Class 35.  Applicant may amend this wording to “organization and processing of seminars and information events about the use of the aforesaid goods for educational purposes,” in International Class 41, if accurate.  Applicant must also remove all parentheses from the wording; parentheses are not acceptable in an identification.

 

International Class 42

 

Suggested amendment: delete all parentheses from the wording; parentheses are not acceptable in an identification.

 

Please note that, while an application may be amended to clarify or limit the identification, the applicant may not add any goods or services that are not within the scope of the goods or services recited in the present identification.  37 C.F.R. Section 2.71(b); TMEP section 1402.06.

 

If the applicant adds any further classes to the application, the applicant must comply with each of the following:

 

(1)  The applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP section 1403.01.

 

(2)          The applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1403.01.  This applies to classes added to pending applications as well as to new applications.

 

Foreign Registration Certificate

 

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.

Response Options

 

Please see below for information on how to respond to this Office action.

 

 

/Andrew J. Benzmiller/

 

 

 

/Andrew Benzmiller/

Trademark Examining Attorney

Law Office 116

tel. (571) 272-9127

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

 

• ONLINE RESPONSE:  Applicants are strongly encouraged to communicate with the USPTO through the Office’s Trademark Electronic Application System (TEAS).  Visit http://www.gov.uspto.report/teas/index.htm and follow the instructions for Response to Office Action form.  Note that if the Office Action issued via e-mail, you must wait 72 hours after receipt of the Office Action to respond using TEAS.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

* * *  NOTICE:  FEE CHANGE  * * *

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following fees will be charged for filing a trademark application:

 

•  $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

•     $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.