To: | Procaps Encapsulation Inc. (docketing@finnegan.com) |
Subject: | 78168343 - NXL - 08193.0029-00000 |
Sent: | 3/2/03 4:09:06 PM |
Sent As: | ECom102 |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/168343
APPLICANT: Procaps Encapsulation Inc.
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CORRESPONDENT ADDRESS: FINNEGAN HENDERSON Finnegan, Henderson, Farabow, Garrett & 1300 I ST NW FL 6 WASHINGTON DC 20005-3315
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom102@uspto.gov
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MARK: NXL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 08193.0029-00000
CORRESPONDENT EMAIL ADDRESS: docketing@finnegan.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/168343
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Please note that the examining attorney has found a potentially conflicting pending application.
The examining attorney encloses information regarding pending Application Serial No. 76/370854. The filing date of the referenced application precedes the applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
Action on this application will be suspended pending the disposition of Application Serial No. 76/370854, upon receipt of the applicant’s response resolving the following informalities.
The wording “PAINTBALL EQUIPMENT,” “PAINTBALL ACCESSORIES,” “SPORTING GOODS” and “SPORTING EQUIPMENT” in the identification of goods is unacceptable as indefinite. In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a).
The applicant may adopt the following identification(s) of goods, if accurate:
PAINTBALL HELMETS, in International Class 9.
AMMUNITION FOR PAINTBALL GUNS, in International Class 28.
Likewise, the wording “SPORTING ACTIVITIES” in the recitation of services is unacceptable as indefinite. The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature. TMEP §1402.11.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
The application identifies goods/services that may be classified in more than two (2) international classes. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
PLEASE NOTE: All of the issues raised can be resolved by telephone or electronic mail. The applicant may telephone or e-mail the examining attorney, instead of submitting a written response, to expedite the application.
/MVS/
Maria-Victoria Suarez
Trademark Attorney
Law Office 102
(703) 308-9102, x196
Fax - (703) 872-9231
maria-victoria.suarez@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.