UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/612608
APPLICANT: DEGUSSA AG, an AKTIENGESELLSCHAFT (AG)
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CORRESPONDENT ADDRESS:
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Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MAGSILICA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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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PRIORITY ACTION
RESPONSE TIME LIMIT: To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date. If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. TMEP §708.01.
OFFICE RECORDS SEARCH: 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.
QUESTIONS: Please contact the assigned trademark examining attorney with any questions.
Serial Number 76/612608
The following were discussed in communication with Mark Lambert Whipkey on April 25, 2005. Applicant must respond to each refusal and/or requirement raised below.
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
IDENTIFICATION OF GOODS
The identification of goods is unacceptable as indefinite because the precise nature of the goods is unclear from the present wording. 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.
The applicant may adopt the following identification, if accurate:
Chemicals for use in the manufacture of a broad variety of goods; silica, tin oxide, alumina, cer oxide, zinc oxide; unprocessed artificial resins for _________ [applicant must indicate the specific use or industry]; manures; fire extinguishing compositions; chemical substances for preserving foodstuffs; adhesives for general industrial use, in International Class 1.
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood, namely, rust preservatives in the nature of a coating and wood preservatives; colorants for general industrial use; mordants for use _________ [applicant must indicate the specific use or industry]; metals in foil and powder form for painters, decorators, printers and artists, in International Class 2.
Bleaching preparations and other substances for laundry use, namely, __________ [applicant must specify the type of preparations and substances, e.g., laundry bleach]; cleaning, polishing, scouring and abrasive preparations for __________ [applicant must specify the use, e.g., for automobiles, for ovens]; cosmetics for skincare, non-medicated skin cleaning and smoothing preparations; dentifrices, in International Class 3.
TMEP section 1402.
Applicant may wish to refer to the on-line identification manual on the PTO homepage for acceptable names of goods and services. The web page address is:
http://www.gov.uspto.report/web/office/tac/doc/gsmanual/
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.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.
TRANSLATION OF FOREIGN WORDING
The applicant must submit an English translation of the mark. 37 C.F.R. Section 2.61(b); TMEP section 809.
The applicant must submit the following translation statement:
The English translation of the __________________ [applicant must specify the foreign language, e.g. Spanish, Japanese) wording MAGSILICA is __________________ [applicant must specify the translation of the words in the mark].
GENERAL INQUIRY ON SIGNIFICANCE
The applicant must indicate whether MAGSILICA has any significance in the relevant trade, any geographical significance or any meaning in a foreign language. 37 C.F.R. Section 2.61(b).
APPLICATION PURSUANT TO SECTIONS 1(b) AND 44(d)
If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator. TMEP §§1004.01 and 1004.01(b).
Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>. When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to Office actions. Applicants using TEAS should not submit a duplicate paper copy of the response.
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. The TARR database is available 24 hours a day, 7 days a week. Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday.
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov.
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on October 18, 2004. To reach me by phone after that date call (571) 272-9195.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9116.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
/Sharon A. Meier/
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Sharon A. Meier
Trademark Attorney, Law Office 112
571-272-9195 - phone
571-273-9112 - fa
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