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 issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search of the Office Records

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 that applicant must address:

Identification of Goods –Indefinite Wording
Color Drawing without Color Claim and Color Description

Identification of Goods –Indefinite Wording

The following wording in bold in the identification of goods is indefinite and must be clarified. See TMEP §1402.01.

International Class 009: “laboratory and training aids-namely, electrical power supply units, electric meters, electrified demonstration panels having fully operational models of motors, generators, dynometers and amplidynes, electrical accessory panels; kits for performing electrical and electronic experiments consisting of electrical and electronic circuit elements, voltmeters, ammeters, ohmmeters, oscilloscopes, power supplies, generators, wires and containers for housing the foregoing; laboratory and training aids-namely, hydraulic, pneumatic and process control systems consisting of power supplies, voltmeters, ammeters, signal generators, oscilloscopes, pressure gauges, flow gauges, recorders, level indicators, pumps, and valves, and structural parts and structural fittings for all

Applicant must specify the use of type of use of the laboratory goods, e.g., instruments. Applicant must specify the type of panels, e.g., control panels. Applicant must specify the type of experiments, e.g., laboratory.

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 may change this wording to following if accurate.

International Class 009: “Laboratory instruments and training aids-namely, electrical power supply units, electric meters, electrified demonstration control panels having fully operational models of motors, generators, dynometers and amplidynes, electrical accessory control panels; kits for performing electrical and electronic laboratory experiments consisting of electrical and electronic circuit elements, voltmeters, ammeters, ohmmeters, oscilloscopes, power supplies, generators, wires and containers for housing the foregoing; laboratory instruments and training aids-namely, hydraulic, pneumatic and process control systems consisting of power supplies, voltmeters, ammeters, signal generators, oscilloscopes, pressure gauges, flow gauges, recorders, level indicators, pumps, and valves, and structural parts and structural fittings for all

International Class 016: Laboratory manuals containing scientific information and instructions for performing experiments

See TMEP §1402.01.

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

An applicant may amend an identification of goods only 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 et seq.

Color Drawing without Color Claim and Color Description

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not explicitly state whether color is claimed as a feature of the mark. Applications for marks depicted in color must include (1) a complete list of all the colors that are claimed as a feature of the mark and (2) a description of the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).

In addition, the applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).

Therefore, applicant must submit a mark description and clarify whether color is claimed as a feature of the mark by satisfying one of the following:

(1) If color is not a feature of the mark, applicant must submit a substitute black-and-white drawing of the mark to replace the color drawing of record. See TMEP §807.07(a)(i). However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit an accurate and concise description of the literal and design elements in the mark, omitting any reference to color. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:

The mark consists of a circle on carrying the letters LV in with the bottom of the L extending behind the V and connecting to the circle.

(2) If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:

Color claim: “The color blue is claimed as a feature of the mark.”

Mark description: “The mark consists of a blue circle carrying the letters LV in blue with the bottom of the L extending behind the V and connecting to the circle. The white background is transparent and is not part of the mark”

See TMEP §807.07(b).

Response Guidelines

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

/Anthony M. Rinker/

Law Office 102

U.S. Patent and Trademark Office

571-272-5491

anthony.rinker@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.