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  76/631029

 

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. Section 1052(d). Trademark Manual of Examining Procedure Section 704.01.  

Refusal: Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127 for Multiple Marks.

The applicant identifies its mark as “Shining & Device” (Design?) in the body of the application.

 

Registration is refused because the mark as it appears on the drawing page in the application features more than one mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127.  Specifically, the drawing page shows a word mark and a design mark which, absent evidence to the contrary, are separated to such an extent that they appear as separate marks.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52(a); TMEP §807.03.  In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974); In re Robertson Photo-Mechanix, Inc., 163 USPQ 298 (TTAB 1969).

Please note that when registration is refused because the matter presented on the drawing does not constitute a single mark, the application filing fee will not be refunded. 

Also note that the applicant may amend the drawing only if the amendment does not materially alter the mark.  TMEP §807.14(a).  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the drawing of the mark filed with the original application.  37 C.F.R. §2.72; TMEP §807.14(a)(i).

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Systems Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).  “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  Visa International Service Association v. Life Code Systems, Inc., 220 USPQ 740, 743 (TTAB 1983).  “That is, the new and old forms of the mark must create essentially the same commercial impression.”  In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988).

In the alternative, the applicant may submit arguments that the matter on the drawing does in fact constitute a single mark.   A statement to this effect will overcome this refusal, provided it is ultimately in agreement with submitted specimens.

 

Amend the Identification of Goods.

The identification of goods is unacceptable as indefinite because of the term “distributors.”  These must be identified as “electrical distributors” in order to remain within International Class 9.  Trademark Manual of Examining Procedure Section 1402. 

The applicant may adopt the following identification, if accurate:

 

terminal plate, wiring plate, distributing power plate, fuse seat ,breaker ,no fuse breaker ,touch switch, limit switch, push button switch, switching switch, micro switch, approaching switch, photoelectric switch, thermal switch, elevator switch, solid state relay, fuse, computer cable, signal indicator, electrical distributor in International Class 9

Trademark Manual of Examining Procedure Section 1402. 

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. Section 2.71(a); Trademark Manual of Examining Procedure Section 1402.06, (4th Edition April 2005).   Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification. 

For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at .

 

Responding to this Office Action.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney. However, you may be able to can receive a response faster by sending me an email at john.dalier@uspto.gov with any questions regarding this Office Action.  Note that this email address is not for responses to Office Actions, just questions about Office Actions.

 

Copies of Documents

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: <http://portal.gov.uspto.report/external/portal/tow>.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

 

 

/John D. Dalier/

Trademark Examining Attorney

Law Office 106; 571 272 9150

Fax (571) 273-9106

 

 

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.