Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH RESULTS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

SUMMARY OF ISSUES

In response to this Office action, applicant must address the following issues:

1) Certificate of Registration Required

2) Request for additional information about the goods and services requirement

3) Amendment to the Identification of Goods and Services

4) Multiple Class Application Requirement

5) Statement Regarding the Significance of the Mark

CERTIFICATE OF REGISTRATION REQUIRED – OR OPTION TO DELETE THE SECTION 44(D) BASIS

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04(b).; or

(2) If applicant intends to rely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

SIGNIFICANCE INQUIRY – RESPONSE REQUIRED

Applicant must explain whether “SLC” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. Applicant must also explain whether this wording has any meaning as an acronym. See 37 C.F.R. §2.61(b); TMEP §814.

Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

AMENDMENT TO CLASSIFICATION AND IDENTIFICATION OF GOODS / RECITATION OF SERVICES REQUIRED

A number of items in applicant’s identification of goods and services are indefinite and require clarification. Applicant must clarify the identification of goods and services to specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, then applicant must describe the nature of the goods and services as well as their main purpose, channels of trade, and the intended consumer(s). 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,” “units” 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).

Additionally, the application identifies goods and services that are classified in at least three classes; however, the fees submitted are sufficient for only two classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional classes.

Finally, applicant improperly classified the services “truck traffic and information services,” in International Class 042. These services are properly classified in International Class 039 and have been re-classified accordingly.

Recommended changes have been highlighted in bold and suggestions for amending applicant’s identification of goods and services are in brackets.

PLEASE NOTE: If applicant adopts the recommended identification of goods and services, applicant must remove any brackets from the identification of goods and services and incorporate the bracketed information into the amended description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.

Applicant may adopt the following identification of goods and services, if accurate:

International Class 009: Truck traffic monitoring systems and traffic engineering products, namely, traffic counters primarily comprised of ________ [applicant to component parts comprising the traffic counters, e.g., pressure sensors, image sensors, electronic display interfaces, video cameras, computer software for detecting vehicle location, etc.], combined traffic counters primarily comprised of ________ [applicant to component parts comprising the traffic counters, e.g., pressure sensors, electronic display interfaces, video cameras, computer software for detecting vehicle location, infrared cameras, etc.], classifiers, namely, ________ [applicant to specify the generic or common commercial name for the classifiers], weigh-in-motion scales, circuit boards, accident reconstruction units primarily comprised of ________ [applicant to component parts comprising the accident reconstruction units, e.g., digital cameras, electric warning lights, flashing safety lights, computer software for diagramming accidents, lasers for measuring purposes, etc.], manual traffic counters, namely, ________ [applicant to specify the generic or common commercial name for the manual traffic counters], automatic vehicle identification systems, namely, ________ [applicant to specify the generic or common commercial name for the automatic vehicle identification systems, e.g., scanners, electronic location and immobilization devices installed after purchase for use with vehicles, laser object detectors for use on vehicles, etc.]; toll plaza and toll road data collection systems, namely, ________ [applicant to specify the generic or common commercial name for the systems, e.g., coin-operated gates for toll plaza facilities, electronic automatic coin dispensers, mechanisms for coin operated apparatus, etc.]; parking lot monitors, namely, ________ [applicant to specify the generic or common commercial name for the parking lot monitors, e.g., electronic parking lot ticket dispensers, TV monitors, etc.]; vehicle monitoring controllers, namely, ________ [applicant to specify the generic or common commercial name for the vehicle monitoring controllers, e.g., electric control panels, electrical controlling devices, electrical controllers, etc.]; high speed weigh-in-motion scales, low speed weigh-in-motion scales, road surface analysers, namely, ________ [applicant to specify the generic or common commercial name for the road surface analysers]; portable wheel load scales, on-vehicle weighing scales, display indicators, namely, ________ [applicant to specify the generic or common commercial name for the display indicators, e.g., pressure display indicators, speed display indicators, etc.], on-board computers and static scales; acoustic sensors and microprocessor embedded smart cards containing programming used to _________ [applicant to specify the function or purpose of the smart cards, e.g., used to provide toll through access for vehicle transportation, etc.] especially for use by federal, provincial, local and private roadway authorities to count and classify motor vehicles.

International Class 017: Accident reconstruction units primarily comprised of ________ [applicant to component parts comprising the accident reconstruction units, e.g., pavement marking tape, etc.].

International Class 039: Truck traffic information services.

TMEP §1402.01.

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.

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.

MULTIPLE CLASS APPLICATION 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 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

REQUEST FOR ADDITIONAL INFORMATION ABOUT THE GOODS AND SERVICES REQUIREMENT

To permit proper examination of the application, applicant must submit additional product information about the goods and the services. See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested product information should include fact sheets, instruction manuals, brochures and advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product and services will differ. If the goods and services feature new technology and no competing goods are available, applicant must provide a detailed description of the goods and services.

The submitted factual information must make clear how the goods operate and identify what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods and services will not satisfy this requirement.

Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02. Merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

RESPONSE GUIDELINES

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

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.

/Charisma Hampton/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Charisma.Hampton@uspto.gov

571-270-1522

Law Office 112

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.