Priority Action

OFFICE SEARCH: The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 704.02.

The following issues were discussed in communication with Philip M. Weiss on February 24, 2009.

IDENTIFICATION OF SERVICES:

In Class 11, applicant’s identification is: “Electrical light bulbs, lighting fixtures and parts thereof.”

The following wording is unacceptable:

“Parts thereof” is unacceptable as written in Class 11 because it is indefinite. Applicant must specify what these parts are. In other words, the common commercial name of the parts must be provided. Applicant may adopt the following identification of services, if accurate: “metal screws for lighting fixtures” in Class 6. See TMEP §1402.01. Alternatively, applicant may amend to: “light-conducting filaments” in Class 9.

Taking the above together, applicant may adopt the following:

Class 6: Metal screws for lighting fixtures

Class 9: Light-conducting filaments

Class 11: Electrical light bulbs, lighting fixtures

TMEP §1402.01.

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.

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.

MULTI-CLASS REQUIREMENTS:

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):

(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).

FEES FOR ADDITIONAL CLASSES:

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; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

ABANDONMENT ADVISORY:

If applicant should fail to respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application:

Class 11: Parts thereof

The application will then proceed with the following goods and/or services only:

Class 11: Electrical light bulbs, lighting fixtures

37 C.F.R. §2.65(a).

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Simon Teng/

Simon Teng

Trademark Examining Attorney

United States Patent Trademark Office

Law Office 105

571-272-4930 Telephone

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.