Offc Action Outgoing

Applicant has attempted in good faith to submit a definite identification of goods. However, some of the wording still appears indefinite and possibly misclassified. The requirement for an amended identification is thus maintained and made final. §§1402.01 and 1402.03

B. Identification and Clarification of Goods/Services

International Class 009: Light emitting diode (LED) coaxial illuminators for use in illuminating an object viewed through a lens system, control boxes for controlling the light emitting diode (LED) coaxial illuminators, and control boards for controlling the light emitting diode (LED) coaxial illuminators for use as lighting accessories for microscopes

The wording “illuminators” in the identification of goods/services must be clarified because it is too broad and could include goods/services in other international classes. For example, illuminators are listed in class 011 in the USPTO MANUAL of Identifications. See TMEP §§1402.01, 1402.03.

The other wording in the mark namely LED’s and control boxes and control boards appear to be in class 009.

In addition, the wording does not provide sufficient specificity.

The identification of goods/services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

Applicant may adopt the following identification of goods, if accurate: See TMEP §1402.01.

International Class 009: Light emitting diodes (LED) [containing] coaxial illuminators for use in illuminating an object viewed through a lens system; control boxes for controlling the light emitting diode (LED) [containing] coaxial illuminators, and control boards for controlling the light emitting diode (LED) [containing] coaxial illuminators for use as lighting accessories for microscopes
International Class 011: LED infrared illuminators

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 009 and 011. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

Although identifications of goods and/or services may be amended 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.

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.

C. Requirements for Combined Application 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 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;

(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 international 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; and 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; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

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) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. 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, and (2) the original specimens are acceptable for the added class(es).

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

The specimen(s) of record is acceptable for International Class(es) 009 and an additional specimen will be needed if a class is added.

If applicant does not respond within six months of the mailing date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:

Class 009: coaxial illuminators

The application will then proceed forward for the remaining goods 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

Class 009: Light emitting diodes (LED) for use in illuminating an object viewed through a lens system; control boxes for controlling the light emitting diode (LED) and control boards for controlling the light emitting diode (LED) for use as lighting accessories for microscopes

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.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/wrossman/

William M. Rossman

Trademark Examining Attorney

Law Office 109

William.Rossman@USPTO.GOV

571-272-9029

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 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.