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. 

 

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  76/655458

 

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

 

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.

 

Identification Of Goods

 

The identification of goods is unacceptable because some of the goods are indefinite.  Specifically, cutting tools is unacceptable because it could include “hand held” tools in Class 8.  The applicant should amend the goods to clarify that they are in Class 7 as demonstrated below.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below.

 

The applicant may adopt the following identification, if accurate.  If the applicant adopts more than one Class the applicant must follow the Multiple Class Requirements set forth below.

 

“Earth compacting machines, cartoning machines, compressors for machines, machines for manufacturing and dispensing packing material, packaging machines, machine tools for the cutting of materials,” in International Class 7;

 

“Hand held cutting tools,” in International Class 8.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant is encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html.  The Manual includes explanations and notices of classification policy.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1402.04.

 

Multiple Class Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on Sections 1(b), 44(e) and/or 44(e):

 

(1)   Applicant must list the goods and/or services 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 and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.  The filing fee for adding classes to an application is as follows (current fee information can be found at http://www.uspto.gov):

 

a.       $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

b.      $375 per class, when the fees are submitted with a paper response.  37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Ownership of Prior Registrations

 

If applicant is the owner of U.S. Registration Nos. 3080177, 2383442 and 1817746 then applicant must submit a claim of ownership.  See attached.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 3080177, 2383442 and 1817746.

 

State of Incorporation Omitted

 

Applicant must specify its state or country (for foreign applicants) of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.

 

The applicant is encouraged to telephone the assigned Examining Attorney with any questions regarding the application.

 

 

 

/Kevin M. Dinallo/

Trademark Examining Attorney

Law Office 107

571-272-9731

 

 

 

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.