Offc Action Outgoing

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.

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 76/650039

The Office has reassigned this application to the undersigned examining attorney.

This letter responds to applicant’s communication dated 06/09/2006. Applicant’s request to withdraw the 2(d) refusal based on U.S. Registration No. 2651978 is persuasive. Therefore, the 2(d) refusal is hereby withdrawn. Additionally, the amended identification of goods is still unacceptable as it includes indefinite wording. The requirement for a more definite identification is now made FINAL for the reasons set forth below. Finally, the applicant filed under section 44(e) but it failed to submit a foreign registration pursuant to 15 U.S.C. §1126(e). Therefore, the request for a copy of a foreign registration certificate is also continued and made FINAL.

IDENTIFICATION OF GOODS IS INDEFINITE – FINAL REFUSAL

In its amended identification the applicant omitted to change some of the goods as requested by the former examiner. Additionally, some of applicant’s amendments are unacceptable as indefinite.

The examining attorney is referring to “controllers” whereby the applicant failed to identify the controllers in question. The words “presentation packs” are indefinite and the applicant should indicate what they comprise. The applicant failed to identify the type of “displays” in question. “Electronic tags for electronic discernment” is unacceptable as indefinite and the applicant must be more specific. The applicant needs to clarify nature of goods, (may amend to "electronic tags for goods, namely, encoded micro tags for use in the field of passive labeling, tracing or tracking of persons, animals, vehicles or [specify goods].") Finally, the “recorded optical disks featuring computer programs” is too indefinite and it should be amended to specify purpose/function and, if software is content- or field-specific, the content or field of use.

Please note that the reminder of the identification is acceptable as submitted.

44(e) BASIS – FOREIGN REGISTRATION WAS NOT SUBMITTED

Applicant must submit a copy of the foreign registration to satisfy the requirement of Trademark Act Section 44(e). 15 U.S.C. §1126(e). If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).

The application does not presently contain a copy of the foreign registration. An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration or a registered extension of protection of an international registration from the applicant’s country of origin. If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin. TMEP §§1004 et seq. and 1016.

Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01 and 1004.

SUBSTITUTING A FILING BASIS

If the applicant cannot comply with the requirement for a certified copy of the foreign registration relied on for the 44(e) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.

In this case, the applicant may wish to amend the application to assert a 1(b) basis.

The applicant may be able to overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis.

In this case, the applicant may wish to amend the application to assert a 1(b) basis.

The applicant must submit the following statement:

The 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 since the filing date of the application.

Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1).

Pursuant to section 1006.03 of the TMEP, if the applicant amends the basis for registration from §44(e) to either §1(a) or §1(b), the Office will presume that the original basis for registration is valid, and the applicant will retain the original filing date.

For all the reasons outlined above, and based on the evidence of record, the refusals to register under TMEP Section 1402.01 of the Trademark Act and under 15 U.S.C. §1126(e) are continued and made FINAL.

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this office will declare the application abandoned. 37 C.F.R. Section 2.65(a).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

Florentina Blandu, Esq.

/FBLANDU/

l.o.117

tel. (571) 272-9128

fax (571) 273-9128

e-mail florentina.blandu@uspto.gov (for informal communications)

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail. THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
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. NOTE: The filing date of the response will be the date of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

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.