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  79/003227

 

INTERNATIONAL REGISTRATION NO. 0826911

 

This is a PROVISIONAL PARTIAL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application that applies to only the following goods in the application:  .  15 U.S.C. §1141h(c). 

 

APPLICANT OR ATTORNEY CAN RESPOND TO PROVISIONAL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. 

 

NOTE:  Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:

 

(1)     Attorneys residing in the United States who are in good standing with the bar of any United States court or the highest court of any state, may practice before the Office in trademark matters.

(2)     A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office.  Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion.  A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices.  TMEP §602.

 

The Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

If applicant is not represented by an attorney, applicant may appoint a domestic representative who would receive correspondence from the Office and be served process or notice of proceedings affecting the application.  15 U.S.C. §1141h(d); 37 C.F.R. §2.24.

 

THE APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:

 

NOTE:  This is a partial refusal Office action.  The refusal(s) and/or requirement(s) in this Office action apply only to specified goods in the U.S. application.

 

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

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods-International Class 7

The wording “Welding or cutting apparatus (not electrical), welding burners (all aforementioned goods as far as not included in other classes)” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to delete the use of all parentheses and to only specify the commercial name and nature of the goods.  For example, the wording “Gas welding machines and welding burners therefor, and not electrical welding or cutting apparatus” is acceptable in International Class 7.  TMEP §1402.01.

 

Identification of Goods-International Class 9

The wording “arc or laser welding apparatus (not for medical purposes); computer software on data carriers, parts of all the aforementioned goods (as far as not included in other classes” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to delete the use of all parentheses and to only specify the commercial name and nature of the goods.  For example, the wordings “arc or laser welding apparatus not for medical purposes;  computer software on data carriers [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use], and parts of all the aforementioned goods, as far as not included in other classes”  are acceptable.  TMEP §1402.01.

 

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 should fail to respond to this Office action within the six month time limit, then the following goods will be deleted from the application:  “Welding or cutting apparatus (not electrical), welding burners (all aforementioned goods as far as not included in other classes)” in International Class 7 (International Class 7 will be deleted from the application); “arc or laser welding apparatus (not for medical purposes); computer software on data carriers, parts of all the aforementioned goods (as far as not included in other classes” in International Class 9.  The application will then proceed forward for the following goods and/or services only: Charging apparatus for accumulators; electrical welding or cutting apparatus, particularly arc-welding apparatus; welding electrodes, current and voltage converters, particularly for welding apparatus; current sources, particularly inverter current sources, frequency converters, plasma welding current sources; transformers, photovoltaic systems, structural parts for automated welding; electrical displacement units for vehicles, control systems for handling apparatus or robots, microprocessor control systems for all of the aforementioned goods; none of the aforesaid goods being included in other classes and none being used in relation to games, entertainment or education, computer games, electronic games, interactive games, or software related to entertainment, in International Class 9 and Project or construction planning for the development of current sources and welding apparatus, apparatus and control systems, particularly in conjunction with electronic systems for current sources or welding apparatus; development of computer software, particularly for welding apparatus, for control systems, for quality assurance and for contract management; development of new welding processes or new additive materials for such processes, in International Class 42.  37 C.F.R. §2.65(a).

 

 

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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Dominic J. Ferraiuolo/

Trademark Attorney

Law Office 102

tel: (571) 272-9156

fax: (571) 272-9102

 

 

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.