Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/596435

 

This letter responds to the applicant’s correspondence dated June 22, 2005.

 

The applicant (1) proposed an amended identification of goods; (2) added a disclaimer statement; and, (3) added a standard character claim.  Nos. 2 and 3 are accepted and made part of the record.  No. 1 has raised a new issue.

 

Continued Requirement – Clarification of Identification of Goods

The wording “associated controls,” “ballasts” and “electrical controls” used to describe the goods needs clarification.  The wording “metal halide lighting systems comprised of metal halide lamps, ballasts, and associated controls” may be amended, if accurate, to “metal halide lighting systems comprised of metal halide lamps, ballasts, and electrical controls therefore sold together as a unit,” in Class 11.  The wording “metal halide lighting system components, namely, lamps, ballasts and electrical controls,” appears to combine goods from two different classes.  If these goods are sold separately, the lamps are in Class 11, but the lighting ballasts and electrical controls are Class 9 goods.  Lighting ballasts and electrical controls are classified in Class 11 only if they are provided together with and part of a lighting system.  The wording Applicant may adopt the following identification of goods, if accurate:    TMEP §1402.01.

 

International Class 9

Components for metal halide lighting systems, sold separately, namely, lighting ballasts and electrical controls for lighting systems.

 

International Class 11

Metal halide lamps; metal halide lighting systems comprised of metal halide lamps, ballasts, and electrical controls therefore sold together as a unit; metal halide lighting system components, namely, lamps.

 

New Issue – Requirements for Combined Applications

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods that are classified in at least two international classes, however applicant paid the fee for only one class.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

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

 

(1)   Applicant must list the goods 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 not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

Telephone 571-272-9155

Facsimile 571-273-9155

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.