To: | Heraeus Kulzer GmbH & Co. KG (ndkramer@mindspring.com) |
Subject: | TRADEMARK APPLICATION NO. 76603434 - NATURAL TOUCH - Heraeus 1093 |
Sent: | 3/4/05 10:41:54 AM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/603434
APPLICANT: Heraeus Kulzer GmbH & Co. KG
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: NATURAL TOUCH
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CORRESPONDENT’S REFERENCE/DOCKET NO: Heraeus 1093
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 76/603434
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
SEARCH RESULTS
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The wording “dental materials” in the identification of goods needs clarification because the applicant has not indicated a specific type of dental material. Applicant may change this wording to “Material for repairing teeth and for dental crowns and bridges,” in International Class 5, if accurate. TMEP §1402.01.
The following is also an acceptable amendment: “Dental bridges,” in International Class 10. If applicant adopts the suggested amendment of the goods and/or services, then applicant must add International Class 10. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
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)/an intent to use the mark under Trademark Act Section 1(b) and/or 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.
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).
Applicant must amend the application to specify at least one filing basis in the application; and applicant must also satisfy all the requirements for the basis or bases asserted. TMEP §806. In the present case, applicant has failed to set forth or satisfy the requirements for a basis.
An application may be filed based on the following:
(1) use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));
(2) a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));
(3) a claim of priority, based on an earlier-filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));
(4) foreign registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)).
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases for filing. In such a case, applicant must: (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies. See 37 C.F.R. §2.34; TMEP §§806.02 et seq.
Although multi-basis applications are permitted, applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
Applicant must submit a statement attesting to the facts set forth in the application, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.32(b) and 2.33. No signed verification was provided with the application.
If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that “the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.
If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or §1126, the verified statement must include an allegation that “applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
Applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. 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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Michelle E. Dubois/
Trademark Examining Attorney
Law Office 111
(571) 272-5887 (phone)
(571) 273-5887 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.