Offc Action Outgoing

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  76/664043

 

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.

 

INCORRECT CLASSIFICATION OF GOODS

Applicant must correct the classification of the goods “FILTER MEDIA,” “FILTER BEDS” in the application and amend the application to classify them in International Class 011.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

IDENTIFICATION OF GOODS IN CLASSES 001, 007 AND 011

The identification of goods is indefinite and must be clarified because it includes the open-ended wording “including”  TMEP §§1402.01 and 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.”  Additionally, Applicant must specify the type of resin, in addition to the type of filtration process for the goods in Class 001. 

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

Applicant may substitute the following wording for the entire identification of goods, if accurate:   TMEP §§1402.01 and 1402.03.

 

• Class 001: Mineral substances in the nature of filtering materials comprised of organic and inorganic filling materials, namely, diatomite, perlite, bentonite, cellulose, and chemical salts; Chemical additives, namely, wet strength agents, resins, namely, [SPECIFY TYPE OF RESINS, e.g. acrylic resins, epoxy resins, melamine, resins, phenolic resins], surfactants, polymer based compositions, waterproofing agents and hydrophilic agents, all for use in connection with water filtration processes

 

• Class 007: Filter materials, namely depth filters in the form of filter sheets; filter devices, filter apparatus, filter modules, filter candles and filter media as parts of filtering machines and filtering installations constructed therefrom, namely, filters for machines used in the filtration, clarifying and sterilizing of fluids in the beverage, chemical and chemical-pharmaceutical industries, namely, filters comprised of organic and inorganic fillers, fiberous materials, ion exchanging materials,  resins, polymers, and hydrophilic agents.

 

• Class 011: Filter materials, namely, filter media, filter beds, filter capsules for use in clarifying, filtration and sterilization of fluids in the beverage, chemical and chemical-pharmaceutical industry; Filling materials in the form of fibrous filtering media with interfaces modified using chemical-physical and biological process for use in clarifying, filtrations and sterilization of fluid in the drink, chemical and chemical-pharmaceutical industry.

 

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.

 

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.

 

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 an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

CLASSIFICATION OF GOODS

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 001, 007 and 011.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

 

/janice kim/

Trademark Examining Attorney

Law Office 103

Phone - (571)272-8869

Fax - (571)273-8869

 

 

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.