Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/046790

 

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

 

Telephone Response Suggested

PLEASE NOTE:  Applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised below.

 

Search Results

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.

 

Claim of Ownership of Prior Registration

If the applicant is the owner of Registration No. 1010123, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36; TMEP section 812.  (See attachment.)

 

The applicant may submit the following claim of ownership, if accurate:

 

The applicant is the owner of U.S. Registration No. 1010123.

 

Identification of Goods

The wording “weighing equipment being part of or for use with sorting machines or mail processing machines” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of each item of the goods.  If there is no common commercial name for the product, the applicant must describe the product in detail and its intended uses. TMEP §1402.01.

 

The applicant must clarify the identification of goods by deleting the word “or” and replacing it with the word “and.”  The use of the terms “or” and “and/or” in identifications of goods is to be avoided because it is unclear.  If the applicant does not intend to use the mark on all the items connected by the conjunction “or”, they should not be listed.   If the applicant does intend to use the mark on all of the items connected by the conjunction “or”, then the “or” should be replaced by an “and.”  TMEP section 804. 

 

The word “equipment” in the identification of goods is indefinite and must be clarified because it is too broad and could refer to goods in more than one international class.  Applicant must amend the identification by stating the common generic name of each item or by describing the nature, purpose and intended use of each item.  TMEP §§1402.01 and 1402.03.

 

For assistance with identifying 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.

 

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

 

Class 9:  Optical scanners; optical character recognition apparatus; software for processing images, graphics and text;  weighing equipment, namely, balances and scales being part of and for use with sorting machines and mail processing machines

 

TMEP §1402.01.

 

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.

 

PLEASE NOTE:  All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application. 

 

 

 

John Kelly /jmck/

Trademark Attorney

Law Office 117

571.272.9412

Fax: 571.273-9117 (official responses only)

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.