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  79/002691

 

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

 

Section 2(d) Refusal

 

Since the applicant has used class headings in the identification of goods, the identification is presumed to include all goods in International Classes 9, 11 and 21.   Therefore, please note the following refusal.

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 1583483; 1878521; 1934839; 2013501; 2140573; 2334891; and 2508947 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant seeks to register the term VITEK for goods in International Classes 9, 11 and 21. All of the registered marks include the term VITEK or a phonetic equivalent thereof.  The registrations are in International Classes 9 and 21.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements.

 

Identification of Goods

 

The applicant uses the headings of the international classes as the identification of goods.  The headings indicate the general scope of the classes.  Although such broad designations are sufficient under the trademark laws and practice of many countries, the U.S. Patent and Trademark Office considers them too broad to identify the goods or services in a United States application.  Therefore, the applicant must amend the identification to indicate the specific common commercial name of the goods.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §1401.08, 1402.01 and 1402.01(a).

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  Please also note that parentheses are generally not acceptable in identifications.

 

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, and in this case, which do not fall within International Classes 9,11 or 21.

 

Applicant’s Entity and Country of Organization

 

Applicant must specify what type of entity is applying, e.g., an individual, partnership, corporation or joint venture. In addition, the applicant must indicate the country in which it is organized.   37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. 

 

Further action awaits the applicant’s response.

 

 

 

Steven Fine  /sf/

Trademark Attorney

Law Office 110

(443) 535-9577

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.