Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

 

This Office action is in response to applicant’s communication filed on April 11, 2008.

 

The following are acceptable and have been entered into the record:  the copy of the foreign registration; the explanation as to the dual basis and the explanation as to the significance of the mark.

 

IDENTIFICATION OF GOODS AND/OR SERVICES AND CLASSIFICATION

 

The goods in International Class 1 are properly identified and classified.

 

International Class 7

 

The proposed amendment to the identification cannot be accepted because the wording “mixing machines, filter machines, spraying machines, pumping machines” refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording must be deleted from the identification.

 

The wording “equipment” in the identification of goods is indefinite and must be clarified because it does not indicate the specific type of equipment.  See TMEP §1402.01.

 

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 uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

International Class 9

The proposed amendment to the identification cannot be accepted because the wording “mixing machines, filter machines, spraying machines, pumping machines” refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording must be deleted from the identification.

 

The wording “apparatus; instruments and equipment” in the identification of goods is indefinite and must be clarified because it does not indicate the specific type of goods.  See TMEP §1402.01.

 

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 uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Plating bath machines must be deleted from International Class 9 because it is already properly classified in International Class 7.

 

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.

 

 

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);  a foreign registration under Trademark Act Section 44(e); an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

 

(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).

 

 

 

 

 

 

 

 

/esther borsuk/

Esther Borsuk

Examining Attorney

Law Office 112

Phone:  (571) 272-9131

Fax:  (571) 273-9112

 

 

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.