Offc Action Outgoing

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 78/977204

Action on this application was suspended pending receipt of the foreign registration. In addition, the requirement to amend the identification of goods in Class 9 and recitation of services in Class 37 was continued.

On October 7, 2005, applicant filed the corresponding foreign certificate, and on May 8, 2006 requested that the application be divided to keep Classes 9, 37, 38 and 42 in the parent application.

The requirement to amend the identification of goods and recitation of services is made FINAL.

Identification of Goods

The wording "phonograph records; re-writable and recordable optical discs; and related accessories" in the proposed amendment to the identification of goods needs clarification because the nature of the goods is unclear. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §1402.01.

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: TMEP §1402.01.

Class 9

Computers; electronic pocket translators; video disc player; power amplifiers; cabinets for loudspeakers; speech reread apparatus, namely, electronic audio recorder, converter and playback units; telephones; incoming call displays, namely, caller identification boxes; television sets; video game machines for use with televisions; audio CD players; radios; loudspeakers; cassette players; video tape players; MP3 players; computer software to control and improve computer and audio equipment sound quality and for recording, transmitting, and reproducing sound and images; mobile telephones; phonograph records featuring (specify); compact discs and pre-recorded audio tapes all featuring music and words; blank compact discs and audio tapes; (specify if black or pre-recorded, and if pre-recorded, indicate the subject matter) re-writable and recordable optical discs; pre-recorded video tapes and video discs featuring music, words and images; blank compact discs, audio tapes and video tapes; audio conferencing equipment comprised of headphones, wire and wireless microphones, audio mixers and related accessories, namely (indicate common commercial name of the accessories); video cameras and related accessories, namely (indicate common commercial name of the accessories); video monitors and related accessories, namely (indicate common commercial name of the accessories); video conferencing systems comprised of video monitors, video cameras, video controllers, cabinets, microphones and related accessories, namely (indicate common commercial name of the accessories); video projectors and related accessories, namely (indicate common commercial name of the accessories); large screen video display units and related accessories, namely (indicate common commercial name of the accessories); video printers; video camera housings; camcorders.

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.

Recitation of Services- Class 37

The wording “construction electrical and electronic apparatus” in the proposed amendment to the identification of services needs clarification because the nature of the services is unclear. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.

Incorrect Classification

Applicant classified the services “construction drafting” in International Class 37; however, the correct classification is International Class 42. Applicant must either delete these services or reclassify them in International Class 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

The applicant may adopt the following recitation, if accurate: TMEP §1402.11.

Class 37

Construction planning; building construction and repair; heating equipment installation and repair; electric and electronic appliance installation, maintenance and repair; photographic apparatus repair; dry cleaning; telephone installation and repair; installation, repair, maintenance services of computer hardware and telecommunication apparatus and instruments

Class 42

Computer software design for others; legal services; intellectual property consultation; mechanical research especially with regard to electric and electronic apparatus; industrial design; architectural consultation; design for others in the field of electronic apparatus and instruments, computer hardware and software, telecommunication apparatus and instruments; construction drafting.

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. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

Options

If applicant does not respond within six months of the mailing date of this final action, then the following goods and services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application: "phonograph records; re-writable and recordable optical discs; and related accessories,” and “construction electrical and electronic apparatus.” The application will proceed forward for the remaining goods and services. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

Applicant may respond to this final action by:

(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Alice Benmaman/

Trademark Attorney

Law Office 116

(571) 272-9126

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.

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