UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FIRST 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  76/576977

 

The assigned examining attorney has reviewed the referenced application and determined the following.

  

Search for References Deferred

A search of the Office records is deferred until applicant responds to the issues raised in this Office action, particularly those dealing with the identification of goods and services.  TMEP §704.02.

In order for a proper search of the mark to be conducted for registrability, the applicant must respond to the following requirements:

 

 

 

Requirements

 

Identification of Goods/Services

The wording “Happ Controls 7-Pin Tumbler Locks Happ Controls All-Purpose Cleaner Happ Controls Aspen Elite LED Flashlight Happ Controls Cleaning Cards Happ Controls Coil Cleaner Happ Controls Coin Counter Happ Controls Coin Doors Happ Controls Coin Mechanisms Happ Controls Commodity Trough Cleaner Happ Controls Driving Controls Happ Controls Enviro-Duster Happ Controls E-Z Vend Wax And Oil Remover Happ Controls Glass Cleaner Happ Controls Guardian Hasps Happ Controls Joysticks Happ Controls Lock Department Happ Controls Maple Pro Cue Stick Happ Controls Meters Happ Controls Optical Guns Happ Controls Power Pro Power Supplies Happ Controls Puck Lock Happ Controls Pushbuttons Happ Controls Repair Center Happ Controls Screwdriver Happ Controls Spray Adhesive Happ Controls Spray Paint Happ Controls Stainless Steel Cleaner Happ Controls Ticket Dispenser Happ Controls Vandal Mark Remover Happ Controls Vision Pro Monitors” in the identification of goods  is unacceptable for several reasons. 

First, the identification is unacceptable because applicant has included non-descriptive language.  For example, HAPP CONTROLS is applicant’s proposed mark in pending application Serial No. 76571633.  The applicant may not use potential registered marks in identification of goods TMEP §1402.09.  Therefore, the applicant must amend the identification by substituting the common commercial name of the goods. 

Second, the identification of goods is unacceptable as indefinite and too broad because it could include items classified in numerous other classes. 

Finally, the wording “coin doors, power supplies, lock department, puck lock” in the identification of goods/services 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. 

 

Suggested Identification Of Goods/Recitation Of Services

The applicant may amend the identification to substitute the following wording, if accurate:  

Spray adhesives for general industrial  use in International Class 1;  

Spray paints for [indicate type of paint and use/purpose] in International Class 2; 

All purpose cleaners, coil cleaner [specify type, e.g., air conditioner condenser coil cleaners, heat transfer coil cleaners], glass cleaners, stainless steel cleaners, trough cleaners, wax and oil removers, vandal mark removers in International Class 3; 

Metal tumbler locks, and metal hasps in International Class 6; 

Screwdrivers in International Class 8; 

Electronic tumbler locks, electronic cleaning cards for ____ cleaning [specify the area of use, e.g., currency, credit card slots, photo and optics of ATM machines], coin counting or sorting machines, coin mechanisms for ______ [specify, e.g., coin operated machines, vending machines], electronic driving controls for ________[specify the area of use], computer joysticks, meters, namely, ____[specify type, e.g., acoustic meters, gas meters, frequency meters, sound level meters], optical gun sights, pushbuttons, automatic ticket dispensers, monitors, namely, ____[specify type,  computer monitors, video monitors, voice display monitors] in International Class 9; 

Led flashlights in International Class 11; 

Spray adhesives for stationery or household use in International Class 16;  

Non-metal tumbler locks in International Class 20;  

Dusters in International Class 21; 

Cue sticks for billiards, cue stick for pool in International Class 28; 

Repair center  namely providing maintenance and repair of ______[specify goods being maintained and repaired] in International Class 37.

TMEP §1402.01.   

 

Additions To Identification Not Permitted

The applicant may wish to consult the U. S. Patent and Trademark Office Goods and Services Manual, an on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

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/services that are not within the scope of goods set forth in the present identification.

 

 

Combined Application

The application identifies goods/services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.  37 C.F.R. §2.6(a)(1). 

If the applicant adds any classes, the applicant must submit a specimen showing use of the mark in each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  The applicant must verify that the new specimen was in use in commerce on or before the application filing date with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a).  See note regarding specimen.

The applicant must amend the application to include dates of first use and use in commerce for each class.  37 C.F.R. §2.86(a); TMEP §1403.01.  If the dates differ from those already of record, the applicant must verify the amendment with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c). 

The applicant must list the goods/services by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

 

Unacceptable Drawing

The drawing is not acceptable because it will not reproduce satisfactorily.  The mark contains several black spots and is too large.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).  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.

 

Specimen Required

An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services.  TMEP §904.  The application does not contain a specimen.  The applicant must submit a specimen, and must submit the following statement:

The specimen was in use in commerce at least as early as the filing date of the application.

This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09. 

 

Dates of Use

Applicant must specify the date of first use of the mark anywhere and the date of first use of the mark in commerce, and verify these dates of use with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

These dates of use are required for an application based on use in commerce under Section 1(a) of the Trademark Act, and were omitted from the application.  Trademark Act Section l(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii) and (iii); TMEP §§903 et seq.  Both a date of first use anywhere and a date of first use in commerce must be provided even if they are the same date.  TMEP §903.04. 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true. 

_____________________________

(Signature)

 _____________________________

(Print or Type Name and Position)

 _____________________________

                                                                               (Date)

 

 

 

 

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.

 

 

My Law Office will move on October 25, 2004.  To reach me by phone after that date call (571) 272-9370.  

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9370.

 

 

 

 

Applicant May Wish To Seek Trademark Counsel

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

Applicant’s Response

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

To avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.

 

 

The certificate-of-mailing procedure does not apply to the filing of trademark applications. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(703) 308-9110 ext. 422

 

 

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.