UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/586823
APPLICANT: Babcock-Hitachi K.K.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BHK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 40662/269106
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 76/586823
The assigned examining attorney has reviewed the referenced application and 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. Section 1052(d). TMEP section 1105.01.
The applicant must indicate whether the term "BHK" has any significance in the relevant trade or industry or as applied to the goods/services. 37 C.F.R. Section 2.61(b).
THE IDENTIFICATION OF GOODS IN CLASSES 1 AND 11 ARE ACCEPTABLE.
THIS REQUIREMENT APPLIES TO THE GOODS IN CLASS 7 ONLY.
The identification of goods is unacceptable as indefinite because the nature of the goods is unclear. The applicant must specify the items comprising the equipment by their common commercial name. The applicant may adopt the following identification, if accurate:
“Metal atomic power reactor pressure vessels” in Class 6;
“Atomic power reactor pressure vessels; denitration equipment namely, [specify items]; nox removal equipment [specify items]; flue gas desulphurization equipment namely, [specify items]; coal pulverizers for power plants and boilers; and environmental units namely, [specify] for removing contaminants, gasses and toxic substances” in Class 7;
“Concrete atomic power reactor pressure vessels” in Class 19;
“Plastic atomic power reactor vessels” in Class 20. 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.
THE RECITATION OF SERVICES IN CLASS 42 IS ACCEPTABLE.
THIS REQUIREMENT APPLIES TO THE SERVICES IN CLASSES 37 AND 40.
The recitation of services is unacceptable as indefinite because the nature of the services is unclear. The applicant may adopt the following recitation, if accurate:
“Construction, repair and maintenance of catalysts for use in the power, industrial plant and boiler industries, atomic power reactor pressure vessels, denitration equipment, nox removal equipment, flue gas desulphurization equipment, coal pulverizers for power plants and boilers, environmental units for removing contaminants, gases and toxic substances, power plant boilers, industrial plant boilers, burners for plant boilers, waste heat recovery boilers for power plants, incinerators and desalination units; environmental remediation services, namely, waste disposal” in Class 37;
“Assembling boilers for others and industrial toxic waste disposal plant services for others” in Class 40. TMEP §1402.11.
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 services that are not within the scope of the services recited in the present identification.
To ensure the goods and/or services are identified and classified properly, the applicant may wish to consult the Acceptable Identification of Goods and Services Manual located at http://atlas.gov.uspto.report/netahtml/tidm.html. The applicant should use the listings located in this database exactly as worded as possible. However, use of parenthesis within the identification is unacceptable as indefinite.
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)/a foreign registration under Trademark Act Section 44(e):
(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.
Application Filed Pursuant to 1(b) and 44(e)
Applicant must advise the trademark examining attorney whether applicant intends to rely solely on the foreign registration as the basis for registration. The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.
Unless applicant indicates otherwise, this Office will presume that the applicant wishes to rely on both Section 1(b) and Section 44(e) as the bases for registration. In this case, although the application may be approved for publication, the mark will not register until an acceptable allegation of use has been filed.
Certificate of Foreign Registration Required
Applicant must submit a copy of the foreign registration. If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).
The application does not presently contain a copy of the foreign registration. An application filed under Trademark Act Section 44(e), 15 U.S.C. §1126(e), must include a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin. Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01 and 1004.
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.
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.
/Michele-Lynn Swain/
Examining Attorney, LO 116
PH(571) 272-9232
FX(571) 273-9116
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.