Offc Action Outgoing

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Identification of Goods and Services

The identification is unacceptable as presently worded because certain goods/services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods/services, be all-inclusive, 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," "apparatus" 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).

Further, 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.”

For comparison purposes, the entries requiring amendment have been underlined, and the wording in bold font and/or brackets [ ] indicate information that the applicant must supply. Please be certain to supply all required information when amending the identifications below. Applicant may change this wording to the following, if accurate:

Class 9: Lighting control panels.

Class 11: Lighting products, namely, fixtures, lamps, chandelier crystal, chandelier pendants and chandelier parts, namely [identify the specific chandelier parts by their common commercial names, e.g., chandelier crystal prisms, chandelier columns]; Lighting parts and accessories, namely [identify the specific Class 11 lighting parts and accessories by their common commercial names, e.g., light bulbs, light ballasts, lamp shades].

Class 35: Retail lighting store services.

TMEP §1402.01.

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

For assistance with identifying 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.

Combined Applications

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 and/or services based on actual use in commerce under Trademark Act Section 1(a):

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

(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); and

(3) For each additional class of goods and/or services, 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 and/or services; 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 and/or services 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).

Drawing

The drawing is not acceptable because it appears grainy/snowy and it will not create a high quality image when reproduced. A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52.

Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.52, 2.53(c) and 2.54(e).

If applicant submits a new drawing in the form of a digitized image, it must be in JPG format. The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).

Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; TMEP §807.14.

To submit a special-form drawing electronically via the Trademark Electronic Application System (TEAS), applicant must attach a digitized image of the mark to the communication. The requirements for an electronically submitted special-form drawing are as follows:

The digitized image must be in JPG format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.

The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.

The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.

37 C.F.R. §§2.52(b) and 2.53(c); TMEP §§807.04 et seq and 807.05(c).

/RLF/

Ronald L. Fairbanks

Trademark Attorney

Law Office 117

(571) 272-9405

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.