Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/959907

 

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

 

Search Results

 

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.

 

 

 

 

Classification

 

The services are classified incorrectly.  Applicant must amend the application to classify “Custom manufacture and design of tools and machine tool parts” in International Class 42 and “sharpening and reconstructing cutting tools” in Class 37.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Identification of Goods

 

The word “tools” in the identification of goods is indefinite and must be clarified.  Power-operated tools are classified in International Class 7; hand-operated tools are classified in International Class 8.  Applicant must indicate whether the goods are power operated or hand operated and amend the international classification as appropriate.  TMEP §§1401.02(a), 1402.01 and 1402.03. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 7: “power operated metal cutting tools, namely,{specify item, e.g., drills, routers, circular saws} .”

 

Class 37: “sharpening and reconstructing cutting tools.”

Class 42: "Custom manufacture and design of tools and machine tool parts”

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at <http://tess2.gov.uspto.report/netahtml/tidm.html>.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to include International Classes 37 and 42.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

Combined Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)            Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)            Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Fee

 

The filing fee for adding classes to an application is as follows:

 

(1)  $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>; and

 

(2)  $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Drawing

 

Applicant has submitted a color drawing, but has not provided a complete color claim and the required color location statement.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(ii).

 

Applicant must submit both a color claim and color location statement using the following format: 

 

(1)    Color claim:  “The colors white, orange and gray are claimed as a feature of the mark”; and

(2)    Color location statement:  “The color white appears in the wording MENLO which is written in the center of an oval.  The right side of the oval appears in gray with a gray stripe appearing on the outside of the oval and the color orange appears on the left side with an orange stripe appearing on the outside of the oval.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

/ekajubi/

Elizabeth N. Kajubi

Trademark Attorney

Law Office 107

(571) 272-2727

(571) 273-9107 (fax)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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