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.

Serial Number 79/010616

INTERNATIONAL REGISTRATION NO. 0843347

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 goods specified below. 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 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.

1. Information: No Similar Marks

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.

The applicant must respond to the following requirements.

2. Requirement: Correct Identification of Goods & Services

The applicant must correct several items listed in the identification of goods and services.

a. as to chemical additives for fuels

The current wording chemical additives for fuels used to describe the goods needs clarification because it does not sufficiently describe the type or use of chemical additive. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: Chemical additives for [specify function in relation to fuels or type of fuel, e.g., for use with internal combustion engine fuels, etc.], in International Class 1; and/or Chemical engine additives for fuel treatment, in International Class 1. TMEP §1402.01.

b. as to chemical additives for lubricants

The current wording chemical additives for lubricants used to describe the goods needs clarification because it does not sufficiently describe the type or use of chemical additive. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: Chemical additives for [specify function in relation to lubricants, e.g., for use in the manufacture of lubricants, etc.], in International Class 1; and/or Chemical engine additives for enhancing the performance of [specify type of lubricant, e.g., lubricating oils, etc.] in International Class 1. TMEP §1402.01.

c. as to lubricants

The current wording lubricants used to describe the goods needs clarification because it does not sufficiently describe the type of lubricant. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: all purpose lubricants, in International Class 4; and/or [specify type, e.g., industrial, drilling, etc.], lubricants, in International Class 4. TMEP §1402.01.

d. as to non-chemical additives for lubricants

The current wording non-chemical additives for lubricants used to describe the goods needs clarification because it does not sufficiently describe an additive for a class 4 lubricant. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate: non-chemical additives for [specify lubricants in class 4, e.g., for all-purpose lubricants, industrial lubricants, etc.], in International Class 4. TMEP §1402.01.

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).

For assistance with identifying 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 and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services 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 and/or services will be deleted from the application: Chemical additives for fuels and lubricants, in International Class 1; and lubricants; and non-chemical additives for lubricants, in International Class 4. The application will then proceed forward for the remaining goods only. 37 C.F.R. §2.65(a).

If applicant has questions about its application or needs assistance in responding to this Office action, please email the assigned trademark-examining attorney directly at joanna.dukovcic@uspto.gov.

/Joanna M. Dukovcic/

Trademark Examining Attorney

Law Office 101

Phone: (571) 272-9707

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
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 in your response.

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.