UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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  79/018280

 

The examining attorney acknowledges the applicant’s response to the office action of April 19, 2006.  The section 2(d) refusal is maintained.  The marks are highly similar and the goods are related in use and will be used by identical parties (janitors and cleaning staff).  Before a final refusal may issue the following must be addressed.

Identification of Goods

The proposed amendment to the identification cannot be accepted because the wording "Pads for polishing machines" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Applicant may amend this wording to “Pads for floor polishing machines.”  Emphasis added.

 

 

 

For the applicant's convenience, the Trademark Acceptable Identification of Goods and Services Manual on the internet at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ offers a searchable list of acceptable identifications and classifications.  When formulating and classifying identifications the Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification. 

 

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.

 

Citizenship

Applicant must state its citizenship for the record.  Applicant may state that it is a “Corporation organized in Sweden.”  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.

 

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

 

 

 

/Daniel Capshaw/

Trademark Attorney

Law Office 110

571.272.9356

 

 

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.

 

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.