UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/015008
APPLICANT: Trumpf GmbH + Co. KG
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CORRESPONDENT ADDRESS: KOHLER SCHMID MÖBUS PATENTANWÄLTE |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SATURN
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 79/015008
INTERNATIONAL REGISTRATION NO. 0861255
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. 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 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 REFUSED AS FOLLOWS:
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.
However, the applicant must address the following:
Identification of Goods
Some of the wording in the identification is unacceptable because it is not sufficiently precise. Identifications for registrations issued by the United States Patent and Trademark Office must be very specific and often require more detail than their foreign counterparts. The applicant should place semicolons between each individual tenet of the identification in order to clarify the terms that pertain to a particular item. Furthermore, the identification of goods must be specific and all-inclusive. Applicant should amend the identification to replace indefinite wording such as “including” and “included in this class” and “in particular,” with "namely." Please be aware that applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
The wording “parts of operating tables, included in this class, in particular operating tabletops and operating table columns” in the identification of goods needs clarification because it is indefinite. I particular, “operating table columns” is unclear. The applicant has included “operating tables” in the identification, which would necessarily include operating table tops and support columns. TMEP §1402.01.
The wording “accessories of operating tables, included in this class, in particular head supports, shoulder supports, pelvis supports, buttock supports, arm supports, leg supports, knee supports, foot supports and lateral supports, rectal positioning devices” in the identification of goods needs clarification because it is too broad. Applicant may change this wording to “Operating table accessories, namely, pelvis supports, buttock supports, arm supports, leg supports, knee supports, foot supports, lateral supports and rectal positioning devices for medical use,” if accurate. TMEP §1402.01.
The wording “lifting and transport devices for operating tables” in the identification of goods needs clarification because it is indefinite. The specific devices intended must be specified. Applicant may change this wording to “lifts for lifting invalids on to operating tables,” if accurate. TMEP §1402.01.
The wording “operating table columns” in the identification of goods needs clarification because it is unclear. Applicant must identify this good by its common commercial or generic name. TMEP §1402.01.
The applicant may amend to the following identification if accurate:
Class 10: Operating tables; Operating table accessories, namely, pelvis supports, buttock supports, arm supports, leg supports, knee supports, foot supports, lateral supports and rectal positioning devices for medical use; lifts for lifting invalids on to operating tables
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 or services that are not within the scope of the goods and services recited in the present identification.
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.
Applicant has identified itself as a “GMBH & Co. KG.” It its not clear whether this is one entity or two. Applicant must clarify its entity. For example, an applicant can apply as a partnership, a corporation or a joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. If applicant is a corporation, please state this for the record.
Where an application is originally filed under §66(a) of the Trademark Act, the filing basis may not be changed nor can more than one filing basis be asserted. 37 C.F.R. §§2.34(b)(3) and 2.35(a); TMEP §§806.01(e), 806.03(k) and 1904.01(a).
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).
/ColleenKearney/
Trademark Examining Attorney
Law Office 113
571-272-8278
HOW TO RESPOND TO THIS OFFICE ACTION:
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.