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  78/279752

 

            This letter responds to the applicant's communication filed on January 27, 2004.

 

            In said response, the applicant amended the identification of goods. Some of the wording in the amended identification is indefinite and must be amended.

 

            For the reasons stated below, the requirements to amend the identification of goods is now made FINAL

 

FINAL REFUSAL – IDENTIFICATION OF GOODS

 

IDENTIFICATION OF GOODS

 

              The wording “ELECTRICALLY” in the identification of goods is unacceptable as indefinite.  Moreover, the applicant must specify whether the blankets and mattress pads are for medical or non-medical use. The applicant may amend this wording to “Class 11 – electric  heated blankets not for medical use or electric heated mattress pads not for medical use,” if accurate.  TMEP §1402.01.

 

              In the alternative, if the electric blankets and electric pads are for medical use, the applicant may adopt the following: Class 10 - electric heated  blankets for medical use or electric heated mattress pads for medical use,” if accurate.  TMEP §1402.01.

 

             In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP §§1402.03(a) and 1402.11.

 

            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.

 

    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/.

 

            The examining attorney herein makes FINAL his refusal with respect to this issue.

 

REQUIREMENTS OF MULTI-CLASS APPLICATION

 

             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). 

 

                If the applicant adds any classes, the applicant must submit a specimen showing use of the mark in each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  The applicant must verify that the new specimen was in use in commerce on or before the application filing date with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a).  If, however, the new specimen is of the same type as those already of record, the applicant need not verify the date of use.

 

             The applicant must amend the application to include dates of first use and use in commerce for each class.  37 C.F.R. §2.86(a); TMEP §1403.01.  If the dates differ from those already of record, the applicant must verify the amendment with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

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

 

 

OTHER

 

            Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and

Appeal Board.  37 C.F.R. Section 2.64(a).  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. Section 2.65(a).

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

 

 

 

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.