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  76/577063

 

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

 

Identification of Goods

 

The wording “CONTINUOUS SHEETS OF CELLULOSIC PAPER-FELT, SOMETIMES ASPHALT IMPREGNATED; CONTINUOUS SHEETS OF COATED GLASS FIBER MATS, ESPECIALLY FOR USE AS SEPARATOR LAYERS BETWEEN BUILDING PRODUCTS, NAMELY BETWEEN SHINGLES AND ROOF DECKS, BETWEEN WATERPROOFING MEMBRANES AND ROOF DECKS, BETWEEN CHEMICALLY ACTIVE MEMBRANES AND CHEMICALLY SENSITIVE INSULATIONS OR MEMBRANES, BETWEEN WALL STUDS AND INSULATION OR SIDING OR BETWEEN WALL INSULATION AND SIDING, AND BETWEEN FLOOR JOISTS AND FLOORING SURFACES; COATED GLASS FIBER MATS IN ROLL FORM FOR USE AS SHEETED FLAME BARRIERS ON ANY PRODUCTS REQUIRING ADDITIONAL FIRE RESISTANCE, SUCH AS BEDDING AND UPHOLSTERY AND OTHER FURNITURE AND ALL OTHER MISCELLANEOUS CELLULOSE OR PLASTIC BASED BUILDING PRODUCTS SUCH AS DECORATIVE PANELS, CEILING TILES, SUN-SHADES, WINDOW TREATMENTS, SPACE DIVIDERS, AND COVERING FOR PLYWOOD, PARTICLE BOARD, AND ORIENTED STRAND BOARD” in the identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  TMEP §§1402.01 and 1402.03.  Specifically, the applicant must clarify the highlighted wording in the identification to specify each product, use or purpose that is referred to by the indefinite language.

Additionally, the applicant classified the goods “CONTINUOUS SHEETS OF COATED GLASS FIBER MATS FOR USE AS FIRE BARRIERS AND MOLD RESISTANCE SHEETS IN BUILDING CONSTRUCTION, NAMELY SEPARATOR LAYERS BETWEEN ROOFING MEMBRANES AND INSULATION AND BETWEEN PLYWOOD, PARTICLE BOARD, AND ORIENTED STRAND BOARD BASED ROOFING DECKS AND INSULATION; COATED GLASS FIBER MATS IN ROLL FORM FOR USE AS COVER LAYERS ON INSULATION” in International Class 19; however, the correct classification is International Class 17.  Applicant must either delete these goods or add International Class 19 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

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.

Applicant may substitute the following wording, if accurate: 

“CONTINUOUS SHEETS OF COATED GLASS FIBER MATS, FOR USE AS SEPARATOR LAYERS BETWEEN BUILDING PRODUCTS, NAMELY BETWEEN SHINGLES AND ROOF DECKS, BETWEEN WATERPROOFING MEMBRANES AND ROOF DECKS, BETWEEN CHEMICALLY ACTIVE MEMBRANES AND CHEMICALLY SENSITIVE INSULATIONS OR MEMBRANES, BETWEEN WALL STUDS AND INSULATION OR SIDING OR BETWEEN WALL INSULATION AND SIDING, AND BETWEEN FLOOR JOISTS AND FLOORING SURFACES; CONTINUOUS SHEETS OF COATED GLASS FIBER MATS FOR USE AS FIRE BARRIERS AND MOLD RESISTANCE SHEETS IN BUILDING CONSTRUCTION, NAMELY SEPARATOR LAYERS BETWEEN ROOFING MEMBRANES AND INSULATION AND BETWEEN PLYWOOD, PARTICLE BOARD, AND ORIENTED STRAND BOARD BASED ROOFING DECKS AND INSULATION; COATED GLASS FIBER MATS IN ROLL FORM FOR USE AS COVER LAYERS ON INSULATION; COATED GLASS FIBER MATS IN ROLL FORM FOR USE AS SHEETED FLAME BARRIERS ON PRODUCTS REQUIRING ADDITIONAL FIRE RESISTANCE, NAMELY, BEDDING AND UPHOLSTERY FURNITURE AND CELLULOSE OR PLASTIC BASED BUILDING PRODUCTS NAMELY, DECORATIVE PANELS, CEILING TILES, SUN-SHADES, WINDOW TREATMENTS, SPACE DIVIDERS, AND COVERING FOR PLYWOOD, PARTICLE BOARD, AND ORIENTED STRAND BOARD” in International Class 17;

 

“BUILDING CONSTRUCTION MATERIALS, NAMELY, CONTINUOUS SHEETS OF CELLULOSIC PAPER-FELT FOR USE AS (APPLICANT MUST PROVIDE USE SUCH AS FOR ROOF COVERINGS); CONTINUOUS SHEETS OF CELLULOSIC ASPHALT IMPREGNATED PAPER-FELT; ROOFING FELTS; ASPHALT SATURATED ROOFING FELTS” in International Class 19.  TMEP §§1402.01 and 1402.03.

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

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

 

(2)   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. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

 

Search of Office Records

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

 

 

 

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.

 

To reach the undersigned attorney by telephone after October 20, 2004, please call (571) 272 - 9459.  Thank you.

 

 

 

/Brendan D. McCauley/

Brendan D. McCauley

Examining Attorney

Law Office 114

703-308-9114 X165

 

 

 

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.