UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/582625
APPLICANT: Kabushiki Kaisha Tanita
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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CORRESPONDENT’S REFERENCE/DOCKET NO: T34628US0
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/582625
The assigned trademark examining attorney has reviewed the referenced application filed on March 24, 2004, and the applicant’s preliminary amendment filed June 9, 2004, and has determined the following.
Search Results
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.
Identification of Goods
The wording of the identification of goods for International Class 9 is unacceptable as indefinite. The applicant may amend this wording to the following, if accurate. TMEP §1402.01. Please note, changes, notes and suggested wording appear in bold type.
Alcohol breath testing units, breath analyzers, body weight scales with body fat analyzer, body weight scales with body composition analyzer, body weight scales, baby scales, kitchen scales, bath room scales, industrial scales, scales for commercial use, pedometers, water quality analyzers, skin condition analyzers not for medical use, air analyzers, body odors analyzers, electrical and magnetic measuring instruments, namely, [identify specific instruments], electrical communication machines and instruments, namely, computers, computer keyboards, computer memories, printers for use with computers, mouse, mouse pads, electronic circuits, integrated circuits, electronic circuits in which computer programs are recorded, computer programs for managing personal data for health care, and providing advice based on said data for use in association with body weight scales with body fat analyzer and other aforementioned goods (please note: the parentheses have been deleted; the Office treats items in parentheses in identifications of goods as deleted matter), electronic circuits and CD-ROMS in which computer game programs are recorded for [specify subject matter or field of use], pre-recorded video discs and videotapes featuring [specify subject matter], video games for home use, metronomes, electronic circuits and CD-ROMS in which programs for portable games with liquid crystal displays are recorded, electronic publications either downloadable or recorded on optical discs, magnetic discs or magnetic tapes, namely, books, magazines and manuals about health care and/or how to lose weight in International Class 9.
The wording of the identification of goods for International Class 10 is unacceptable as indefinite. The applicant may amend this wording to the following, if accurate. TMEP §1402.01.
Contraceptives, namely diaphragms for contraception and condoms, medical apparatus, namely pulse rate monitor for measuring a person's pulse, clinical thermometers for medical use, bone densitometers and ultrasound sonometers for bone density, body fat analyzers for medical use, body composition analyzers for medical use, bioelectrical impedance analyzers for medical use, sphygmomanometer, electric massage devices for domestic use in International Class 10.
The applicant should note that the above suggested identification of goods is acceptable as written. Any alteration may render it unacceptable. Accordingly, if the applicant wishes to amend the goods differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Please further 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. Section 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 original identification.
Option to Delete Basis
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
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.
/G. Fosdick/
Geoffrey Fosdick
Trademark Attorney
Law Office 111
(540) 851-0865
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.