Priority Action

The following confirms the telephone conversation between the trademark examining attorney and George Lewis on November 29, 2005. The trademark examining attorney has reviewed applicant's response filed on November 8, 2005. As discussed, the following requirements are maintained and made FINAL. 37 C.F.R. §2.64. If applicant amends the application to comply with the requirements listed below within two months of the above mailing date, the trademark examining attorney will give priority handling to the amended application. The six-month deadline for filing a response specified above, or, in the alternative, for filing an appeal to the Trademark Trial and Appeal Board, remains in effect. 37 C.F.R. §2.64(a).

The amended wording “communication devices for receiving measuring data from body composition analyzers, body fat analyzers, sphygmomanometers, pedometers, etc, and storing, processing and transmitting such data to personal computers and other computers” in the identification of goods for International Class 9 is unacceptable as indefinite. Furthermore, it broadens the scope of the goods by omitting the wording “electric” which was used to identify these goods in the original identification of goods.

Furthermore, the use of “etc.” is vague. In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. TMEP §§1402.01 and 1402.03(a).

The applicant may amend this wording to the following, if accurate. TMEP §1402.01.

Electronic communication devices, namely, personal digital assistants and handheld computers, used to transmit, and receive measuring data from body composition analyzers, body fat analyzers, sphygmomanometers and pedometers.

The applicant should note that the above suggested recitation of services is acceptable as written. Any alteration may render it unacceptable. Accordingly, if the applicant wishes to amend the services 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 recitation, additions to the recitation are not permitted. 37 C.F.R. Section 2.71(a); TMEP § 1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the original recitation.

Final Refusal

If the applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). The 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)); and/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).

/G. Fosdick/

Geoffrey Fosdick

Trademark Attorney

Trademark Law Office 111

(540) 851-0865

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via 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/portal/tow.

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