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  76/636307

 

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

 

Search Results

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.

 

Standard Character Drawing Claim

The applicant must submit the following standard character claim:

 

The mark is presented in standard character format without claim to any particular font style, size, or color.  37 C.F.R. §2.52(a).

 

 

 

Identification of Goods

The wording “chemically treated paper” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to further specify the commercial name of the goods.  For example, the wording “chemical test paper” is acceptable in International Class 1.  TMEP §1402.01.

 

The wording “chemical products for photographic, duplicating, copying, and printing purposes; developers, fixers, fixing agents, printing inks; inks contained in cartridges; inks contained in roller cassette” in the identification of goods is unacceptable as indefinite and overbroad.  The applicant must amend the identification to further specify the commercial name and nature of the goods and to amend the classification of these goods as follows.  For example, the wording “photographic developers and photographic fixers” is acceptable in International Class 1; “printers’ ink” is acceptable in International Class 2;  “inks contained in cartridges for ink jet printers and inks contained in roller cassette for ink jet printers” is acceptable in International Class 2.  The wording “chemical products for photographic, duplicating, copying, and printing purposes” is acceptable in International Class 1.  TMEP §1402.01.

 

If Applicant adopts the suggested amendments of the goods, then Applicant must amend the classification to the International Class as indicated above.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

The wording “toners, toner cartridges for use in copying machines, facsimile machines, printing machines and printers; toner contained in cartridges” is acceptable as specified in International Class 2.

 

The wording “sorters, collators, automatic document feeders and staple units; photographic, cinematographic and optical apparatus and instruments; cases for all the aforesaid goods; disc drive, disc media (magnetic and optical); facsimile apparatus; semi-conductor (integrated circuits including monolithic ic and hybrid ic, lsi and vlsi); software, computer programs” in the identification of goods is unacceptable as indefinite and overbroad.  The applicant must amend the identification to further specify the commercial name and nature of the goods, to delete the use of all parentheses and to amend the classification as follows.  For example, the wording “automatic document sorters, automatic document collators, automatic document feeders and automatic power stapler units” is acceptable in International Class 7; “cinematographic machines and apparatus; photographic cameras; optical character readers; digital disc drives; blank optical discs; blank magnetic discs; semi-conductors namely integrated circuits including monolithic IC and hybrid IC, LSI and VLSI” is acceptable in International Class 9; “cases for cinematographic machines and apparatus, photographic cameras and optical character readers” is acceptable in International Class 9. TMEP §1402.01.

 

Applicant must indicate the purpose(s) or function(s) of the computer software and computer programs. If the software is field-specific, then applicant must also specify the field of use.  TMEP §1402.03(d).  This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks.  See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

 

The wording “thermal re-writable media, thermal film” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to further specify the commercial name and nature of the goods.  For example, the wording “thermal correcting film for type; thermo-sensitive paper” is acceptable in International Class 16.  TMEP §1402.01.

 

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

 

For assistance with identifying and classifying 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.

 

Combined Applications

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 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 classes covered by the fee already paid, or (2) pay the required fee for each additional class.  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 following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

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

 

 

/Dominic J. Ferraiuolo/

Attorney  US Patent & Trademark Office

Law Office 102

tel: (571)-272-9156

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.