Offc Action Outgoing

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  78/225727

 

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

 

PRIOR PENDING APPLICATION:

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/125212.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Action on this application will be suspended pending the disposition of Application Serial No. 78/125212, upon receipt of the applicant's response resolving the following informalities.

 

IDENTIFICATION OF GOODS AND CLASSIFICATION:

 

The identification of goods is unacceptable as indefinite because the wording is vague and overly broad and some of the goods may fall in different classes.  The applicant may adopt the following identification, if accurate: 

 

Transport containers and building materials made of metal, steel, aluminum, copper, alloy, ______ (the applicant must specify the other types, for instance, soffits) for transport or storage of radioactive or otherwise hazardous products; metal containers and metal baskets for transport, transfer or storage of radioactive or otherwise hazardous products, in International Class 6.

 

Insulation bags, pockets and covers for transport, transfer or storage of radioactive or otherwise hazardous products, in International Class 17.

 

Nonmetal building material, namely, wood, blunt, lead, ______(the applicant must specify the type, for instance, fascia, soffits,) for transport or storage of radioactive or otherwise hazardous products; metal containers and metal baskets for transport, transfer or storage of radioactive or otherwise hazardous products, in International Class 19 

 

Non-metal containers, namely, ______ (the applicant must specify the items, for instance, non-metal insulated shipping containers) for transport, transfer or storage of radioactive or otherwise hazardous products, in International Class 20.

 

Bags for the transport, transfer or storage of materials in bulk, namely, radioactive or otherwise hazardous products, in International Class 22.

 

TMEP §1402.01.

 

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 that are not within the scope of goods set forth in the present identification.

 

The decision as to the proper classification of goods or services is a purely administrative matter which is within the sole discretion of the Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).

 

ADDITION OF A CLASS:

 

The application identifies goods that may be classified in several 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. 

 

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.  37 C.F.R. §2.6(a)(1). 

 

The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

DUAL BASES:

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

SIGNIFICANCE OF MARK:

 

The applicant must indicate whether the wording "TN" has any significance in the relevant trade or industry or as applied to the goods.  37 C.F.R. Section 2.61(b).

 

RESPONSE:

 

To respond to this Office action electronically, the applicant must:

 

• include the serial number in the subject line;
• send the response to mailto:ecom105@uspto.gov.  E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
• submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
• respond within six-months from the Office action mailing date, or within the period stated in the Office action;
• respond in English; and
• sign the response electronically, e.g. /john smith/.  See 37 CFR §1.4(d)(1)(iii); TMEP §804.05.

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

Note: only one e-mail address may be used for correspondence.  TMEP §§304.03 and 304.07. 

 

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

 

/Marlene Bell/

Marlene Bell

Trademark Examiner

Law Office 105

(703) 308-9105 X 173

ecom105@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.

 

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