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 76/666394

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

NO CONFLICTING MARKS NOTED

The examining attorney has searched the Office records and has found no similar registered or pending mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. However, the applicant’s mark cannot be approved for publication unless and until the following requirements are satisfactorily addressed:

IDENTIFICATION OF GOODS

The wording in the identification of goods requires clarification because the nature of the goods remains unclear. TMEP §§1402.01 and 1402.03. In particular:

The wording “COVERED ELECTRODE PRODUCTS” is unacceptable as indefinite because it does not specify the types of electrode products for which the mark is to be used. The applicant may clarify such wording, for example, by indicating that the goods are in the nature of covered welding electrodes.
The wording “SOLID WIRE AND ROD PRODUCTS” is also unacceptable because the term “products” renders the identification as overly broad. The applicant must specify the types of wire and rod products for which the mark is to be used (e.g., wires, steel rods).
The wording “ALUMINUM WELDING PRODUCTS” is also unacceptable because the term “products” renders the identification as overly broad. The applicant must specify the types of welding products for which the mark is to be used (e.g., welding torches).
The wording “SOLID AND FLUX CORED WIRE PRODUCTS” and “CORED WIRE PRODUCTS” are also unacceptable because they are overly broad. The applicant must specify the types of wire products for which the mark is to be used (e.g., wires).
The wording “SUBMERGED ARC PRODUCTS” is unacceptable because it is unclear as to the types of products for which the mark is to be used (e.g., electric arc welders).
The wording “HARDSURFACING PRODUCTS” is unacceptable because it is unclear as to what the goods entail.

For the reasons set forth above, the applicant must amend the recitation for clarification. The applicant may substitute any of the following wording, if accurate:

WELDING CONSUMABLES, NAMELY, SOLID WIRES AND STEEL RODS, SOLID AND FLUX CORED WIRES, CORED WIRES, in International Class 6;

WELDING CONSUMABLES, NAMELY, SUBMERGED ARC PRODUCTS IN THE NATURE OF [SPECIFY, E.G., ELECTRIC ARC WELDING MACHINES], HARDSURFACING PRODUCTS IN THE NATURE OF [SPECIFY, E.G., GROUND SURFACE FINISHING AND COMPACTING MACHINES], in International Class 7;

WELDING CONSUMABLES, NAMELY, COVERED ELECTRODES, ALUMINUM WELDING TORCHES, STAINLESS STEEL ELECTRODES, SUBMERGED ARC PRODUCTS IN THE NATURE OF ELECTRIC ARC WELDERS, in International Class 9.

For assistance with identifying goods and services in trademark applications, and for additional examples of acceptable wording for the applicant’s goods, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

Lastly, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening their scope is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

ADDITION OF CLASSES

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods based on actual use in commerce under Trademark Act Section 1(a):

(1) Applicant must list the goods by international class with the classes listed in ascending numerical order;

(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

(3) For each additional class of goods, applicant must submit:

(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

(b) one specimen showing use of the mark for each class of goods; the specimen must have been in use in commerce at least as early as the filing date of the application;

(c) a statement that “the specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application;” and

(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

Please note that the specimen of record is acceptable for International Classes 6, 7 and 9.

STANDARD CHARACTER CLAIM

Applicant must submit the following standard character claim:

The mark consists of standard characters without claim to any particular font, style, size, or color.

37 C.F.R. §2.52(a); TMEP §807.03(a).

SIGNIFICANCE INQUIRY

The applicant must specify whether the wording MIG-3, MIG3 or MIG 3 has any significance in the applicant’s trade or industry. Specifically, the applicant must state whether such wording has any recognizable meaning in the field of welding and welding products. If so, the applicant must provide a definition, explanation or clarification of such terms. Lastly, the applicant must specify what the notation “3” signifies in relation to the wording MIG and in relation to the goods listed in the application. 37 C.F.R. §2.61(b).

Please note that failure to fully comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application. See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

/Melissa Vallillo/

Examining Attorney

Law Office 113

Phone: (571) 272-5891

Fax: (571) 273-9113

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.