Offc Action Outgoing

In the Office action dated June 10, 2008, applicant was required to address the following requirement(s): (a) provide an acceptable amended identification of goods; (b) provide an acceptable amended classification of goods if necessary; and (c) a response to the request for information regarding the goods.

AMENDED IDENTIFICATION OF GOODS NOT ACCEPTABLE – REQUIREMENT MADE FINAL

In its response, applicant provided an amended identification of goods; however, the amended identification is not acceptable. Therefore, the amended identification is not acceptable and the requirement to provide an acceptable amended identification of goods is hereby maintained and made final.

The wording “water-valves and steam-valves” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.

The wording “non-electric valve actuators” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.

The wording “piping systems, namely, flanges, pipes, pipe fittings and tubes” in the identification of goods is indefinite and must be clarified because it is too broad and presumably includes goods in other international classes. See TMEP §§1402.01, 1402.03. Moreover, this wording appears to be misclassified in International Class 007.

Applicant may substitute the following wording, if accurate:

“Piping systems comprised primarily of metal flanges, metal pipes and tubes, metal pipe fittings” in International Class 006;

“Valves being parts of machines; steam-valves being parts of machines and not for plumbing, heating and cooling; water-valves being parts of machines and not for plumbing, heating and cooling; transmission gears for machines and gear operators; machine parts, namely, transmission gears for machines, non-electric hydraulic and pneumatic valve actuators; valves being parts of machines for water, steam, oil, natural gas and chemical processing and transmissions; gear operators for valves; valves being part of machines, namely valves being part of machine piping systems; valves being part of machines, namely, gate valves, globe valves, swing check valves and angle valves; pneumatic and hydraulic valve actuators in the nature of gear operators for valves; pneumatic and hydraulic valve actuators used in industrial piping” in International Class 007; and

“Steam valves; Water valves, namely, regulating accessories for water supply in the nature of metered water valves” in International Class 011;

“Piping systems comprised primarily of non-metal flanges, non-metal pipes and tubes, and non-metal pipe fittings in the nature of pipe couplings, pipe joints, rosettes, and gaskets” in International Class 017

“Water valves, namely, shut-off valves for water sprinkler nozzles” in International Class 021

Moving Goods Between Contemporaneously Filed Companion Applications with Same Mark

If an applicant has filed separate applications to register the same mark, the applicant may amend to move items of goods or services from one application to another, if the application from which the item is to be moved was filed at least as early as the application to which it is to be moved. Moving goods between files in this way may only be done when the applications involved have not yet been published in the Official Gazette. Items of goods/services can be moved between files only in applications filed under §1 or §44 of the Trademark Act. The applicant cannot amend to move items of goods/services to or from a §66(a) application.

Scope

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

ID Manual Online

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. See TMEP §1402.04.

AMENDED CLASSIFICATION OF GOODS NOT ACCEPTABLE – REQUIREMENT MADE FINAL

In its response, applicant provided an amended identification of goods; however, the amended identification is not acceptable and as amended still presumably covers goods in more than one International Class. Therefore, the amended identification and classification is not acceptable and the requirement to provide an acceptable amended identification and classification of goods is hereby maintained and made final.

The application identifies goods and/or services that are classified in at least 5 classes; however, the fees submitted are sufficient for only 1 class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).

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; 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).

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

RESPONSE TO REQUEST FOR INFORMATION NOT ACCEPTABLE – REQUIREMENT MADE FINAL

In its response, applicant only makes reference to its website as a response to the request for information. This is not an acceptable response, and it does not add actual evidence to the record. Therefore, the response to the request for information is not acceptable and the requirement to provide an acceptable response to the request for information with respect to the goods is hereby maintained and made final.

The nature of the goods on which applicant intends to use its mark is not clear from the present record and additional information is required. An applicant can be required to provide more information if it is necessary for proper examination of the application. 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods. If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods.

Failure to respond to a request for information can be grounds for refusing registration. TMEP §814; see In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003). Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

FEES

The filing fee for adding classes to an application is as follows:

(1) $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; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

PROPER RESPONSE TO FINAL REFUSAL

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

/Jay C. Besch/

Trademark Examining Attorney

Law Office 108

United States Patent and Trademak Office

(571)272-8606 phone

jay.besch@uspto.g

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.