To: | BALTIMORE AIRCOIL COMPANY, INC. (ebrosius@amsted.com) |
Subject: | TRADEMARK APPLICATION NO. 76690131 - BRANCHLOK - N/A |
Sent: | 1/7/2009 11:36:18 AM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/690131
MARK: BRANCHLOK
|
|
CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
|
APPLICANT: BALTIMORE AIRCOIL COMPANY, INC.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 1/7/2009
THIS IS A FINAL ACTION.
This Office Action is in response to applicant’s correspondence received December 12, 2008 wherein applicant: 1) submitted an amended identification of goods; and 2) submitted arguments in response to the examining attorney’s specimen refusal.
The proposed amendment to the identification cannot be accepted because it 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. See 37 C.F.R. §2.71(a).
The amendment identifies the following goods and/or services: “Water distribution systems for use in cooling towers and heat exchangers.” This wording is beyond the scope of the original wording, “cooling towers and heat exchangers, because the original identification was for towers and exchangers, and the amended identification is for water distribution systems.
Identifications 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. Id.; see TMEP §§1402.06 et seq., 1402.07. Therefore, this wording should be deleted from the identification.
The original identification of goods is unacceptable as indefinite. Applicant must clarify the identification of goods by specifying that its “cooling towers” are “water cooling towers.” See TMEP §1402.01.
Applicant may adopt the following identification of goods, if accurate:
Class 11: “Water cooling towers; heat exchangers.”
See TMEP §1402.01.
Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.
In this case, the specimen of record does not show the applied-for mark used in connection with cooling towers and heat exchangers. The specimen of record appears to be a picture of a part of the cooling tower that has a tag that indicates the cooling tower is fitted with a “BRANCHLOK removal system.” The specimen does not show the applied-for mark used with cooling towers or heat exchangers themselves. Instead, the mark indicates a feature of the cooling tower. In fact, the mark shown in connection with the cooling tower appears to be “PT2.”
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Proper Response to a Final Office Action
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). 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).
/Jennifer M. Hetu/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4858
Fax: (571) 273-9108
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.