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  76/612530

                             

FINAL ACTION

 

This letter responds to the applicant’s communication filed on May 25, 2005 in which the applicant amended the identification of goods.  The amendment is unacceptable.

 

For the reasons below, the requirement to clarify the identification of goods is maintained and made FINAL.

 

Unacceptable Identification

 

The wording in the identification of goods still needs clarification because it is indefinite.  TMEP §§1402.01.  Applicant must amend the identification of goods to specify the common commercial or generic name for the “chemical ingredient.”  If there is no common commercial or generic name for the chemical ingredient, then applicant must further describe the nature of it as well as its main purpose and intended uses.  TMEP §1402.01.  In particular, the applicant should specify the type of chemical ingredient, e.g., chemical additive, and the specific purpose, e.g., for use as a cleansing ingredient in the manufacture of shampoo.  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.  Applicant may substitute the following wording, if accurate: 

 

Chemical additives for use as a cleansing ingredient in the manufacture of shampoo in International Class 1.

 

TMEP §§1402.01.

 

The applicant is encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO’s “homepage” at www.uspto.gov on the Internet,  or it can be directly accessed at http://tess2.gov.uspto.report/netahtml/tidm.html.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The applicant should use the listings located in this database exactly as worded if possible.  Please note that any listings that include terms within parenthesis and/or brackets must set forth the term or terms that specifically cover the applicant’s goods or services and that the actual parenthesis or brackets may not be included. As always, any identification of goods or recitation of services the applicant chooses to adopt should 1) accurately describe the applicant’s goods or services; 2) be placed in the correct class of goods or services; and 3) list only those goods or services within the scope of those included in the original application.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration.

 

The requirement for an acceptable identification of goods is maintained and made FINAL.

 

Applicant’s Response

 

If 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).  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).

 

If the applicant has any questions, please telephone the assigned examining attorney.

 

/Elizabeth Pignatello/

Trademark Examining Attorney

Law Office 105

(571) 272-9308

 

 

 

 

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.