Offc Action Outgoing

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  76/630699

The assigned examining attorney has reviewed the referenced application and determined the following:

NO LIKELIHOOD OF CONFUSION WITH CURRENT REGISTRATIONS OR PRIOR PENDING APPLICATIONS

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 1207.01 et seq.

 

However, before the application can proceed, the applicant must address the following informalities:

 

INFORMALITIES

 

IDENTIFICATION UNDULY VAGUE/APPLICANT MUST AMEND THE IDENTIFICATION

 

In the identification of services applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "systems," "products," "concepts," or "not limited to," then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

Specifically, the applicant must:

 

1. Supplier of industrial process gases:  amend this to “supplying industrial process gases” so that a service is identified.

 

2. Supplier of…welding products:  clarify the nature of the services, e.g., distributorships in the field of welding products, and reclassify the services in Class 35.

 

The applicant may adopt the following identification, if accurate: 

 

Cl. 35:  Distributorships in the field of welding products, namely, welding masks and welding torches

 

            Cl. 39:  Supplying industrial process gases

 

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://tess2.gov.uspto.report/netahtml/tidm.html.

 

MULTI-CLASS APPLICATION REQUIREMENTS

 

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).

 

SPECIMEN UNACCEPTABLE/SUBSTITUTE SPECIMEN AND DECLARATION IN SUPPORT REQUIRED

 

As a specimen of use, the applicant has submitted what it has described as a “Scanned Photograph of a Label Displaying Applicant’s Use of the Mark.”  The specimen shows the mark and also refers to a “Table of Contents.”  The specimen is unacceptable because it does not show use of the mark in connection with the services:  there is no mention of any of the services on the specimen, and the applicant has given no explanation as to how the label might be used in conjunction with the services, or how a “Table of Contents” might relate to the services.

 

For each class, applicant must submit a substitute specimen showing use of the mark for the goods and/or services specified in the application, because the specimen currently of record does not show use of the mark for any goods and/or services identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq.  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

A suitable declaration would read:

 

DECLARATION

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the substitute specimen submitted herewith was in use in commerce at least as early as the filing date of the application; that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

                 (Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

                (Date)

 

If applicant cannot comply with the requirement for a substitute specimen and a declaration in support for the usebasis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert an intent to use basis.

 

 

 

 

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

Fax (571) 273-9102

 

 

 

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.