UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/213456

 

This letter responds to the applicant’s communication filed on January 22, 2004.  As explained below, the applicant’s proposed amendments to the identification are unacceptable.  Therefore, the refusal to register is maintained and made FINAL. 

 

The examining attorney WITHDRAWS the refusal to register under Section 2(d) of the Trademark Act.

 

OUTSTANDING ISSUES

Identification and Classification

 

The applicant has classified “robe hooks . . . all made of metal” in International Class 21.  The correct classification is International Class 6.  The applicant must either delete this wording or add International Class 6 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The applicant has expressed disagreement with the examining attorney’s suggestion that metal robe hooks are properly classified in Class 6.  Please consult the Identification Manual and note that “metal garment hooks” are classified in Class 6.

 

For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the world wide web at http://www.uspto.gov/web/offices/tac/doc/gsmanual.

 

The wording “fittings” in the identification is unacceptable as indefinite.  The applicant must provide a listing of the goods intended by this wording. TMEP §1402.11.  The applicant has expressed disagreement with the examining attorney’s suggestion with respect to “fittings.”  Please consult the Identification Manual and note that “plumbing fittings” require a listing of the specific goods.

 

The wording “valves, namely mixing, wall and diverter valves” in the identification is unacceptable as indefinite.  It is unclear whether the valves are the type and nature available as plumbing fittings and properly classified in Class 11 or whether the valves are parts of machines and should be classified in Class 7.  To eliminate the ambiguity, the applicant may amend this wording to “plumbing fittings, namely, valves, namely mixing, wall and diverter valves in Class 11,” if accurate.  TMEP §1402.11.

 

The applicant may adopt the following identification, if accurate:

 

Metal robe hooks in Class 6.

 

Plumbing fittings, namely, fittings for bathtubs, bidet and shower, namely, shower valves, flush valves, and bath spouts; faucets; tub fillers; shower head sprayers; hand-held showers; plumbing fittings, namely, valves, namely mixing, wall and diverter valves in Class 11.

 

Towel bars, tissue holders, tumbler holders, lotion dispensers, soap dishes, all made of metal in Class 21.

 

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.

 

Additional Fees

 

The application identifies goods that may be classified in three international classes.  The applicant has submitted fees for one class.  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.  

 

APPLICANT’S RESPONSE

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

Karla Perkins

/Karla Perkins/

Trademark Examining Attorney

Law Office 102

703-308-9102 ext. 169

Karla.Perkins@uspto.gov (informal inquir

 

 

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 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.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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