UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/630068
APPLICANT: Aeroturn LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ROTARY
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CORRESPONDENT’S REFERENCE/DOCKET NO: T-175-107
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 76/630068
The assigned trademark examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARK FOUND
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.
REQUIREMENTS
Before the application can be considered further, the following requirement(s) must be addressed.
IDENTIFICATION OF THE GOODS INDEFINITE
The identification of goods "personnel control devices" needs clarification because it is indefinite, may be misclassified and may contain goods in more than one class. Applicant must clarify the identification of goods to specify the common commercial or generic name for the type of personnel control devices. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP § 1402.01. For example, applicant may amend this wording to any of the following, if accurate:
Automated security gates [o.k. in Class 9]
Personnel control devices, namely, handcuffs [properly in Class 6]
Personnel control devices, namely, plastic handcuff strips [properly in Class 20]
In the identification, Applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names or generic names. TMEP §§1402.01 and 1402.03(a).
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
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 or services that are not within the scope of the goods and services recited in the present identification.
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees may be insufficient to cover all the classes in the application. Specifically, the application identifies goods/services that may be classified in additional international classes.
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; 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.) Applicant may use the declaration form set forth in the next section.
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
The current specimen of record comprises a copy of the mark by itself and is unacceptable as evidence of actual trademark use because it does not show use of the mark on the goods or on packaging for the goods. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
Pending an adequate response to the above, registration is refused because the specimen of record does not show use of the proposed mark as a trademark. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.
If applicant cannot comply with the requirement for a substitute specimenfor the Section 1(a)basis asserted, applicant may amend the basis of the application to an intent-to-use application under Section 1(b). See TMEP §§806.03 et seq. To base the application on a bona fide intention to use the mark in commerce, applicant must submit the following statement: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” Trademark Act Section 1(b), 15 U.S.C. § 1051(b). This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R, §2.20. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.
REQUEST FOR INFORMATION
Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods because the nature of the goods on which applicant intends to use its mark is not clear from the present record. If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).
Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Rules of Practice have the effect of law, and failure to comply with a request for information is grounds for refusal of registration. See In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999) (applicant's failure to fully comply with the requirements for additional information justifies refusing registration); In re Babies Beat, Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (refusal upheld based on applicant's failure to submit patent information regarding configuration); In re Big Daddy’s Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973); see generally Chrysler Corp. v. Brown, 441 U.S. 281, 295 (1979)(agency regulations have the force and effect of law).
RESPONSE
If applicant has any questions regarding any of the issues set forth in this Office action, applicant may telephone the trademark examining attorney.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 108
Tel. (571) 272-9343
Fax. (571) 273-9108
douglas.lee4@uspto.gov
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.