UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/619721
APPLICANT: Degussa AG
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CATACXIUM
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CORRESPONDENT’S REFERENCE/DOCKET NO: 032301WZ001
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 76/619721
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. §1052(d). TMEP §704.02.
Recitation of Services
The wording used to describe the services needs clarification because it is indefinite. Applicant may adopt the following identification of services, if accurate: Providing of sales and purchasing business information about chemical products via the Internet, International Class 35. TMEP §1402.01. The identification of goods for International Class 1 and the recitation of services for International Class 42 are accepted as filed.
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.
Drawing
The drawing in the U.S. application is unacceptable because the mark depicted thereon does not correspond to the mark depicted in the foreign registration. Applicant must either (1) amend the drawing so that it conforms to the mark as shown in the foreign registration; or (2) amend the basis for registration from Section 44 of the Trademark Act to Section 1(a) or Section 1(b) of the Trademark Act. 15 U.S.C. §§1051(a) and (b) and 1127; 37 C.F.R. §2.51; TMEP §§807.12, 807.12(b), 807.14, 1011.01 and 1011.03.
The mark CATACXIUM shown on the drawing differs from the mark cataCXium shown on the foreign registration. Inquiry is made as to whether applicant’s home country granted “standard character” rights in the mark as claimed in the United States application. This office can not convey any rights to applicant that exceed those granted to applicant by the home country. If applicant did not receive such rights in the mark, the standard character claim will have to be withdrawn by applicant.
Significance of Mark
The applicant must indicate whether “Catacxium” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
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.
Edward Nelson
Trademark Examining Attorney
Law Office 106
(571) 272-9202
(fax) 571-273-9106
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.