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  78/347366.  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods

The identification of goods is unacceptable because the term “materials” is indefinite.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following identification, if accurate:

 

·        Cementing materials, namely, [indicate specific goods, e.g., roofing cement] (Class 19)

 

TMEP section 1402.01.  The applicant should note that, although an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 1402.01.  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 additional information regarding acceptable wording, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at http://atlas.gov.uspto.report/netahtml/tidm.html.

Additional Classes of Goods

If the applicant were to include more than one class in the application based on intent to use in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), the applicant must comply with each of the following.

 

(1)  The applicant must list the goods by class with the classes listed in ascending numerical order.  TMEP section 1403.01.

 

(2)     The applicant must submit a filing fee for each class of goods not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1403.01.  Currently, the fee for filing a trademark application is $335 for each class of goods or services.

 

Trademark Counsel

The applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  The applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

 

 

/Leigh Caroline Case/

Trademark Attorney

Office phone: (703) 308-9105 x 148

Office fax: (703) 872-9875

 

 

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.