UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/584341
APPLICANT: sia Abrasives Holding AG
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SIAMOTIVE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 61116
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 76/584341
The assigned examining attorney has reviewed the referenced application and determined the following.
Identification of Goods :
The current wording used to describe the goods needs clarification. Applicant may adopt the following identification of goods, if accurate: TMEP §1402.01.
International Class 3: ABRASIVES AND POLISHINGS, PARTICULARLY FLEXIBLE ABRASIVES AND COMPACT ABRASIVES IN THE NATURE OF ABRASIVE STRIPS AND POLISHING POWDERS,
NONWOVEN FABRICS AND ABRASIVE CLOTH CONTAINING NONWOVEN FABRICS FOR USE AS ABRASIVES AND POLISHINGS
International Class 7: ABRASIVES AND POLISHINGS, PARTICULARLY GRINDING AND POLISHING FOILS, GRINDING ROLLS, GRINDING BELTS, GRINDING BRUSHES, GRINDING THREADS, GRINDING DISCS AND GRINDING PADS, ALL OF THE AFORESAID AS MACHINE PARTS [UNCHANGED]
International Class 8: MANUALLY OPERATED HAND TOOLS AS ABRASIVES AND POLISHINGS, NAMELY GRINDING AND POLISHING DISCS, GRINDING AND POLISHING PADS, GRINDING BRUSHES,
GRINDING BELTS, GRINDING THREADS AND GRINDING FOILS FOR HAND TOOLS FOR THE TREATMENT OF SURFACES; HAND OPERATED FIXTURES FOR FLEXIBLE ABRASIVES AND POLISHINGS INCLUDING NONWOVEN FABRICS
The wording “HAND OPERATED FIXTURES FOR FLEXIBLE ABRASIVES AND POLISHINGS INCLUDING NONWOVEN FABRICS” in the identification of goods 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.
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 that are not within the scope of goods set forth in the present identification.
Standard Character Claim :
Applicant must submit the following standard character claim: “The mark is presented in standard character format without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
NOTE: The Trademark Rules pertaining to drawings were amended on November 2, 2003. For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003. Exam Guide 01-03, section I.A.9.
Significance of Mark :
The applicant must indicate whether the wording "SIAMOTIVE" has any significance in the relevant trade or industry or as applied to the goods. 37 C.F.R. Section 2.61(b).
Dual 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. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 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 a certified copy of 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. If the applicant does so, the applicant may not subsequently rely on the foreign registration. TMEP section 1006.01.
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 the certification or certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation.
General Information :
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. Section 1052(d). TMEP section 1105.01.
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.
/Won T. Oh/
Law Office 114
(571) 272-9204
Fax: (571) 273 - 9114
email: won.oh@uspto.gov
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.