Offc Action Outgoing

The examining attorney issues this action upon request of management officials. On behalf of the Office, the examining attorney apologizes for any inconvenience caused by this additional action. Please note that all issues not discussed in this office action have been resolved.

The refusal(s) and/or requirement(s) only applies to the applicant’s goods and/or services in class(es) 12. If the applicant should fail to respond to this Office action within the six month time limit, then class(es) 12 will be deleted from the application and the application will proceed forward for the remaining class(es) of goods and/or services only.

IDENTIFICATION OF GOODS AND/OR SERVICES

The identification of goods and/or services is unacceptable as indefinite because it does not describe the goods and/or services with sufficient specificity; the antenna gaskets and gasket tapes are properly classified in several classes. If the antenna gaskets are especially designed for aircraft antennas, the goods are classified in International Class 9. If the antenna gaskets are not especially designed for aircraft antennas, the goods are classified in International Classes 6 or 17 depending on the material composition of the goods. The gasket tape is classified in International Class 17. The suggested identification below contains additional guidance.

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).

Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).

Descriptions of goods and services should use the common, ordinary name for the goods and/or services. TMEP §1402.01. If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem., 102 USPQ at 322.

It is the applicant’s duty and prerogative to identify the goods and/or services. TMEP §1402.01(e). The easiest method for the applicant to honor its duty is to use the Manual of Acceptable Identifications of Goods and Services. Using identification language from the Manual generally enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods and/or services. TMEP §1402.04.

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.

However, the applicant may adopt the following identification of goods and/or services, if accurate [changes in bold text]:

Metal aircraft antenna gaskets in International Class 6;

Aircraft antenna gaskets especially designed for aircraft antennas; electronic interconnect cables, namely, wiring harnesses and interconnects for aircraft in International Class 9;

Aircraft antenna gasket tape; non-metal aircraft antenna gaskets; waterproof liquid urethane sealant for encapsulating aircraft parts and for providing watertight coating and sealing to aircraft parts in International Class 17.

Identifications of goods and/or services can be amended only 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 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) 6, 9, and 17 only.

COPIES OF DOCUMENTS

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.gov.uspto.report/external/portal/tow. Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR. The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access. This conversion process is expected to take several years.

QUESTIONS ABOUT THIS ACTION

For questions regarding the legal issues raised in this action, please contact the undersigned attorney. Please note that the examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re American Physical Fitness Research Institute Inc., 181 USPQ 127 (TTAB 1974).

If needed, the applicant should contact the Trademark Assistance Center (TAC) for technical help in using the Trademark Electronic Application System (TEAS). TAC may be reached via e-mail at TEAS@uspto.gov. TAC may also be reached by telephone at (571) 272-9250 or (800) 786-9199. TAC technical support is available 24 hours a day, 7 days a week (select option # 3 if calling).

For all other non-legal matters, including status inquiries and petitions to revive or reinstate an application, please contact TAC. For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time, Monday through Friday, except on federal holidays.

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209

571.273.9114 Law Office Facsimile

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.