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  76/619909

 

 

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.

 

 

Class 1

 

The wording “coloring compounds for buffing, polishing, burnishing and finishing metallic and other surfaces in bar, stick and liquid form, compositions for sizing and setting up buffing, polishing and abrading wheels, belts and tools, and corrosion and rust resistant coating and preservative compounds in bar, stick and liquid forms; brighteners, chromates, plating, sealing and electrocoloring compounds, cleaners for use in metal finishing, phosphates, chemical treatments, namely-- black phosphates for decorative and corrosion resistant coatings, and reagents for use with plating or cleaning compounds” in the identification of goods is too broad because it could include items classified in other classes.  The applicant may amend the identification to substitute the following wording, if accurate:

 

Chemical treatments, namely, black phosphates for decorative and corrosion resistant coatings, and reagents for use with plating or cleaning compounds; phosphates for ____[specify the area of use]; brighteners for use in ____[specify the area of use e.g.,  electroplating]; chromates ___[specify type, e.g., lead chromate, sodium chromate]; plating______[specify type, e.g., chromium plating composition, metal platinum composition],  Int. Cl. 1;

 

Coloring compounds for buffing, polishing, burnishing and finishing metallic and other surfaces in bar, stick and liquid form, and corrosion and rust resistant coating and preservative compounds in bar, stick and liquid forms; Int. Cl. 2;

 

Chemical cleaners for use in metal finishing [may be moved to class 3 in this application]; compositions for sizing and setting up buffing, polishing and abrading wheels, belts and tool___ [note that  a portion of this id is already in class 3 in this application]; Int. Cl. 3. TMEP §§1402.01 and 1402.03.  See cancelled Registration No. 1760887 and U.S. Registration No. 1760887, where registrant has the same goods listed in two different classes.  The same goods are generally not classified in the different classes unless the purpose or area us use is different.  As written it seems that these goods are classified in class 3.  See attachments.

 

The nature of the goods, namely, sealing and electrocoloring compounds on which the applicant uses the mark is not clear from the present record.  The applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).  The applicant must classify the area of use so that the classification may be determined.

 

 

Class 3

The wording, “cleaning, polishing, scouring and abrading compounds for buffing, burnishing, polishing and finishing metallic and other surfaces in bar, stick and liquid form, and compositions for setting up buffing, polishing, finishing and abrading tools with said compounds, mill and dip treatments for buffing cloths and fabrics” in the identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:  Cleaning, polishing, scouring and abrading compounds for buffing, burnishing, polishing and finishing metallic and other surfaces_____[must specify the commercial name of the other surfaces] in bar, stick and liquid form, and compositions for setting up buffing, polishing, finishing and abrading tools with said compounds; Chemical cleaners for use in metal; compositions for sizing and setting up buffing, polishing and abrading wheels, belts and tool, Int. Cl. 3.   TMEP §1402.01.

 

The nature of the goods, namely, mill and dip treatments for buffing cloths and fabrics on which the applicant uses the mark is not clear from the present record.  The applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d). 

 

Class 7

 

The identification of goods is unacceptable as indefinite because it is not clear that all the items listed are for use with the power operated buffs.  The applicant may adopt the following identification, if accurate:  Power operated buffs, buffing wheels and rolls, brushes and polishing wheels and rolls, belts, and power operated abrading pads and tools in wheel, pad and disk form, all for use with power operated buffs,  and replacement components thereof, Int. Cl. 7 TMEP §1402.01.

 

Class 22

The wording “buffing, abrading, polishing and finishing cloth and fabrics, mill and dip treated cloth for buffing, abrading, polishing, and finishing, and anode bags,” in the identification of goods is unacceptable as indefinite and too broad because it could include items classified in other classes.  The applicant may amend the identification to substitute the following wording, if accurate:  Buffing, abrading, polishing and finishing cloth and fabric, Int. Cl. 21.  TMEP §§1402.01 and 1402.03. 

 

The applicant has classified the goods incorrectly.  The applicant must amend the application to classify the goods in International Class 21.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The nature of the goods, namely, mill and dip treated cloth for buffing, abrading, polishing, and finishing, and anode bags on which the applicant uses the mark is not clear from the present record.  The applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).  Are the cloths impregnated with chemicals?  What are the uses for the anode bags?

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/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.

 

Combined Application

 

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 and/or services that are classified in at least five international classes, however applicant paid the fee for only four class(es).

 

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 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 (current fee information should be confirmed at http://www.uspto.gov); 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, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen(s) of record are acceptable for class(es) all classes only.  However, if applicant adds a class, then applicant must submit an additional specimen. 

 

Description of the Mark

 

The applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The statement may be in the following form:

 

The mark consists in part of the stylized letter JL.

 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

NOTICE:  FEE CHANGE   

 

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.

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

(571) 272-9199

 

 

 

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 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.