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  76/669203

 

The assigned examining attorney has reviewed the referenced application and 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.

 

The applicant must respond to the following informalities.

 

 

Foreign Registration Expired

The foreign registration on which this application is based expired on February 28, 2007.  Applicant must submit evidence that the foreign registration will be in force at the time of issuance of the United States registration.  This evidence must consist of a true copy, photocopy, certification or certified copy of the certificate of registration showing that the foreign registration has been renewed, accompanied by an English translation of such documents.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a). 

 

Identification of Goods

The wording in the identification of goods is unacceptable as indefinite and seems to identify goods in multiple classes. Is the related equipment sold as a component of the heaters? The applicant must specify the goods. The applicant may amend this wording to the following, if accurate.  TMEP section 1402.11

 

Class 6 – metal hoses for catalytic natural gas or propane fired building heaters;

Class 9 – thermostats and  battery leads for catalytic natural gas or propane fired building heaters;

Class 11 - catalytic natural gas or propane fired building heaters and related equipment, namely, ventilation hoods, regulators, protective grills, [or the applicant may adopt:  catalytic natural gas or propane fired building heaters comprised of thermostats, ventilation hoods, regulators, protective grills, battery leads and hoses]

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

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 that are not within the scope of the goods recited in the present identification.

 

Requirements for a Combined Application – Goods Based on Use

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; 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 §§810.10, 904.09, 1403.01 and 1403.02(c).

 

The specimen is acceptable for class 11 only.

 

Fees for Adding Classes – Application Fees as of January 31, 2005

 

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; and

 

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

 

Consolidated Appropriations Act, 2005, Pub. L. 108-447.

 

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).

 

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

 

Mrs. A.D. Saunders

/Mrs. A. D. Saunders/

Trademark Attorney

LO 109

(571) 272-9349

(571) 273-9109 (formal responses only)

 

 

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.