To: | ART Australasia Pty Ltd (hjklein@koslaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77910430 - ICAM - 1142-004.701 |
Sent: | 4/13/2010 6:00:47 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/910430
MARK: ICAM
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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
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APPLICANT: ART Australasia Pty Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 4/13/2010
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 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).
Information Regarding Mark’s Significance Required
Applicant must explain whether “ICAM” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 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.
Amended Identification of Goods Required
Applicant must remove any parentheses from the identification of goods and services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications 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.
The wording “cutting devices being parts of machines; cutting tools being parts of machines; rotary metal cutting tools (machines); single point cutting tools (machines); work processing machines for the cutting of metals; apparatus for machining; flexible machining units; precision machine tools for machining materials” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must further describe the particular cutting devices and tools as machine parts intended (e.g., milling cutters, gear cutters, metal working machine tools, etc.), must clarify whether its “rotary metal cutting tools (machines)” and “single point cutting tools” are machines or are machine tools, must specify the common commercial or generic name of its “work processing machines for the cutting of metals” (e.g., cutting machines, bending machines, boring machines, drilling machines, etc.), must specify the common commercial name of the particular apparatus for machining and flexible machining units (e.g., metal working machining centers, etc.), and must specify the particular type of machine tools for machining materials intended (e.g., lathes, grinding tools, gear cutters, chasers, broaches, etc.).
Applicant may substitute the following wording, if accurate: “cutting devices being parts of machines, namely, [specify particular devices]; cutting tools being parts of machines, namely, [specify particular cutting tools]; rotary metal cutting tools for machines; single point cutting tools for machines; work processing machines for the cutting of metals, namely, [specify common commercial name of machines]; apparatus for machining, namely, [specify particular apparatus]; flexible machining units, namely, [specify particular type of machining units]; precision machine tools for machining materials, namely, [specify particular tools].”
To summarize, applicant may adopt the following identification of goods, in whole or in part, if accurate:
Class 007 Apparatus for use in cutting, namely, [specify particular apparatus, e.g., cutting torches, etc.]; automatic cutting machines; automatic machines for cutting work pieces; automatic machines for the cutting of fabrics; chucking apparatus for metal cutting machines; cutting devices being parts of machines, namely, [specify particular devices]; cutting machines; cutting tools being parts of machines, namely, [specify particular cutting tools]; industrial cutting machines; machines for the cutting of sheet material; rotary metal cutting tools for machines; single point cutting tools for machines; work processing machines for the cutting of metals, namely, [specify common commercial name of machines]; routers being machines; routers being parts for machines; apparatus for machining, namely, [specify particular apparatus]; flexible machining units, namely, [specify particular type of machining units]; precision machine tools for machining materials, namely, [specify particular tools]
If the suggestions offered by the examining attorney are incomplete or are inaccurate, applicant is encouraged to consult the online searchable Manual of Acceptable Identifications of Goods and Services for guidance at http://tess2.gov.uspto.report/netahtml/tidm.html.
Information Regarding Multi-Class Applications
The application identifies goods that may be classified in more than the number of international classes covered by the fee paid. Therefore, the applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on a foreign registration under Trademark Act Section 44(e):
(1) Applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
Copy of Foreign Registration Required
An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must 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. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must respond to this requirement by satisfying one of the following:
(1) Applicant must submit a copy of the foreign registration from applicant’s country of origin. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign certificate is not written in English. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b).; or
(2) Applicant must submit a request that the trademark examining attorney suspend action on the application until applicant has procured a copy of the foreign registration (and English translation, as appropriate). TMEP §1003.04(a).
If applicant cannot satisfy one of the above, applicant may respond by requesting to amend the basis for registration from Section 44(e) to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.
Miscellaneous Information Regarding Responding to this Office Action
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
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.
/Debra Lee/
Trademark Attorney
Law Office 116
Voice: 571-272-5897
Fax: 571-273-9116
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.