UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/642090
APPLICANT: Blue IP, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: STAMCO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 050083
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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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 76/642090. 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. §1052(d). TMEP §704.02.
The following statement must be added to the application: The mark is presented in standard character format without claim to any particular font style, size, or color.
The Trademark Rules pertaining to drawings were amended on November 2, 2003. The standard character designation replaces the term “typed drawing” formerly used by the Trademark Office. In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font style, size, or color. A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but also for any possible renderings of the mark, as long as those renderings do not contain any design elements. A registered standard character drawing of the mark provides protection for display on the specimens in any lettering style.
The identification of goods is unacceptable because the following terms are indefinite: strip processing lines, equipment, strip and plate levelers, coiling and coil handling machines, and packaging systems. In the identification of goods, applicant must use the common commercial or generic 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 such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a). More definite wording is suggested below.
The applicant should also note that level gauges and indicators are classified in Class 9, rather than Class 7. It is unclear whether “tension leveling equipment” and “sheet, strip, and plate levelers” would include level gauges and indicators.
The applicant may adopt the following identification and classification, if accurate:
· Strip processing lines in the nature of [indicate nature of the strip processing lines, e.g., machines] for [indicate purpose of the machines] and parts thereof, namely, coating, painting, tension leveling and annealing equipment, namely, [indicate type of coating, painting, tension leveling, and annealing equipment e.g., powder coating spray guns, paint spray guns, power-operated annealing machines]; cut-to-length, slitting, shearing, grinding and polishing equipment, namely, [indicate specific equipment, e.g., power-operated saws, power-operated slitters, power-operated shears, power-operated grinders, power-operated polishers]; sheet, strip, and plate levelers, namely, [indicate specific goods, e.g., handling machines for coil and flat rolled material, namely, metal sheet, metal strip and metal plate levelers]; wire coiling and wire coil handling machines; and packaging systems, namely, [indicate specific components of the systems, e.g., packing machines] (Class 7)
· Tension leveling equipment, namely, level gauges and indicators (Class 9)
TMEP section 1402.01 and 1402.11. The applicant should note that, although 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(b); TMEP section 1402.01 and 1402.06. Therefore, the applicant may not amend to include any goods/services that are not within the scope of goods /services set forth in the present identification.
For additional information regarding acceptable wording, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at http://tess2.gov.uspto.report/netahtml/tidm.html.
Two classes of goods are suggested above. If the applicant were to include more than one class in the application, then the applicant must comply with each of the requirements below for those goods/services based on actual use in commerce under Trademark Act Section 1(a):
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) The applicant must submit a filing fee for each international class of goods/ services not covered by the fee already paid; the filing fee for adding classes to an application is as follows: $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 $375 per class, when the fees are submitted with a paper response. Consolidated Appropriations Act, 2005, Pub. L. 108-447;
(3) For each additional class of goods/services, the 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. A sample declaration is attached for the applicant’s use. (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 §§810.10, 904.09, 1403.01 and 1403.02(c).
Please note that the specimens of record are acceptable for Class 7 only.
/Leigh Caroline Case/
Trademark Attorney, Law Office 105
(571) 272-9140
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.
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT: Blue IP, Inc.
MARK: STAMCO
SERIAL NUMBER: 76642090
EXAMINING
ATTORNEY: Leigh Case
LAW OFFICE: 105
DECLARATION FOR USE-BASED APPLICATION
(for use in adding classes)
The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date.
The date of first use of the mark in commerce ______________________________; the date of first use of the mark anywhere: ___________________________________.
The specimen submitted by the applicant was in use in commerce at least as early as the filing date of the application.
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 facts set forth in this declaration 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)
Date: