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 76/656680

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

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.

The Identification of Goods is Indefinite

The wording used as the identification of goods is unacceptable as indefinite. It is unclear from the current wording exactly what goods are used in conjunction with the mark. The applicant may amend this wording to, if accurate:

Electric devices for killing insects and vermin in Class 9.

-and-

Surgical, medical, dental and veterinary instruments and apparatus, namely, _____ (indicate specific items, e.g. surgical retractors); artificial limbs, eyes and teeth; orthopedic articles, namely, ___ (indicate specific items, e.g. braces); suture materials, namely, ______ (indicate specific items, e.g. surgical sutures) in Class 10.

-and-

Electronic air purifiers, air conditioners in Class 11. TMEP Section 1402.01.

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.

Specimens For Class 9

The submitted specimen for Class 9 shows an air purifier that is properly classified in Class 11. Accordingly, to fulfill the requirements for the 1(a) basis for Class 9, a specimen of use must be submitted. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §§904.01 et seq. and 904.09.

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen were in use in commerce at least as early as the filing date of the application. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

The statement supporting use of the substitute specimen must read as follows:

The substitute specimen was in use in commerce at least as early as the filing date of the application.

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert a signed declaration.

“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 application 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.” The signature should include the title of the signatory and the date the declaration was signed.

Substituting A Basis

If the applicant cannot comply with the requirement for an acceptable specimen for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing for this class of goods or services 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 Section 1(b) basis. To do so, 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 (See above). Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1).

Please note that an applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), for the same goods or services. 37 C.F.R. Section 2.34(b)(1).

Pending an adequate response to the above, registration is refused because the specimens of record do not show use of the proposed mark as a trademark and/or service mark. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§904.11, 1202 and 1301.02 et seq.

The applicant could also rely on the 44(e) basis for Class 9 eliminating a need for a specimen, if the 1(a) basis is deleted.

1(b) and 44(e) Basis For Class 10

Applicant must advise the trademark examining attorney whether applicant intends to rely solely on the foreign registration as the basis for registration in Class 10. The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application. The applicant could also rely on the 44(e) basis for Class 9 eliminating a need for a specimen, if the 1(a) basis is deleted.

Unless applicant indicates otherwise, this Office will presume that the applicant wishes to rely on both Section 1(b) and Section 44(e) as the bases for registration. In this case, although the application may be approved for publication, the mark will not register until an acceptable allegation of use has been filed.

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

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

(571) 273-9108 (Fax for Official Responses)

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.