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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/619909

 

This letter responds to the applicant’s communication filed on 12/16/05.

 

The description of the mark has been accepted.

 

The amendment to the identification of goods listed in class 7 has been accepted.

 

The information concerning applicant’s products has been made of record.

 

The fee for an additional class has been accepted.

 

Specimen (Class 1)

 

 

Dates of Use/Specimen  [New Class 1]

The applicant has indicated that the declaration supporting the substitute specimen was submitted.  The specimen has been made of record.  However, there is no declaration supporting use of the specimen for the additional class, or dates of use for class 1. 

 

The applicant must comply with the following as to class 1.

 

(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)    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

(c)   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.).

 

The following requirements are continued.  However, please note that some goods may be classified in class 9 and 21.  It is not clear whether applicant actually have goods classified in class 22.

 

Class 1

 

The examining attorney previously advised applicant that applicant could use the wording treatments in the identification of goods.  However, use of “treatments” kind of suggests a treatment service?  The applicant may replace this wording with preparations.  The applicant may adopt the following identification, if accurate:  Chemical preparations, namely, phosphates, brighteners, and chromates for decorative and corrosion resistant coatings, and reagents for use with such coatings for anodizing, plating, or cleaning, Int. Cl. 1.  TMEP §1402.01.

 

Class 2

 

The initial Office action was confusing because the examining attorney listed the class 2 goods as class 1 when making the suggested amendment.  The applicant has added class 1 but has not amended class 2 listed in the application.

 

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 has moved appropriate goods to class 1 and class 3 in the amendment listed in the response.  However. The applicant must amend class 2.  The applicant may amend the identification to substitute the following wording, if accurate:

 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;

 Class 3

 

The proposed amendment to the identification of goods listed in class 3 is unacceptable as indefinite and too broad because the wording  “mill and dip treatment for buffing cloth and fabrics is indefinite and could be classified in other classes depending on the purpose of the treatment.  What is the function of the mill and dip treatment?  If it’s abrasive, it is acceptable in class 3.  Note also that use of “treatment” suggests a treatment service.  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 such as wood, plastics and ceramics, in bar, stick, and liquid form, and compositions for setting up buffing, polishing, and finishing, and abrading tools with said compounds; abrasive preparations, namely, mill and dip treatment for buffing cloth and fabrics; chemical cleaners for use on metal; and compositions for seizing and setting up buffing, polishing, and abrading wheels, belts and tools, Int. Cl. 3.  TMEP §1402.01.

 

Class 22 (should be classified in class 21 and/or class 9)

The wording “buffing, abrading, polishing and finishing cloth and fabrics” in the identification of goods is classified in class 21. Further, the wording anode bags are indefinite and depending on the nature of these goods, they are classified in class 9. If the electrolytes are sold in the bag and form part of an anode, they are classified in class 9.   The applicant may amend the identification to substitute the following wording, if accurate:

 

Anode bags in the nature of cloth bags containing electrolytes that form part of the anode, Int. Cl. 9;

 

Buffing, abrading, polishing and finishing cloth and fabrics, Int. Cl. 21.  TMEP §§1402.01 and 1402.03.

 

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 six international classes, however applicant paid the fee for only five 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. 

 Fees

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

The examining attorney regrets any inconvenience to applicant as a result of the delay in making any new requirements.

 

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

 

 

/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 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.