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:

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.

Search Statement

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.

 

Identification of Goods

The wording in the identification of goods is indefinite and must be clarified because it does not indicate the specific purpose or type of goods and the wording is unclear.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “The wording in the identification of goods is indefinite and must be clarified because the specific purpose of the good is unclear and the wording is confusing.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Chemical preparations for galvano plating in the surface treatment of metals, polymers and semiconductors; chemicals used in galvanizing baths and chemical galvanizing preparations for indicate purpose; chemical preparations for tempering and soldering for indicate specific use.”

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

Requirements for Multiple Classes – If Applicable

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 Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

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. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Application Filed Under 1(b) and 44(e)

The application specifies intent to use under Section 1(b) and a foreign registration(s) under Section 44(e) as the bases for registration.  15 U.S.C. §§1051(b) and 1126(e).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  If applicant wishes to rely solely on the foreign registration as the basis for registration, applicant must so notify the undersigned.

 

Unless applicant indicates otherwise, this Office will presume that applicant is relying on both Sections 1(b) and 44(e) as the bases for registration.  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.

 

English Translation of Foreign Certificate

The applicant must submit an English translation of the foreign registration signed by the translator.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(b).

 

Standard Character Drawing Claim

Applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

/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.