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.

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 79/018881

THIS IS A FINAL ACTION

This office action responds to the applicant’s communication filed on April 27, 2007 in which the applicant 1) addressed the entity issue, 2) amended the recitation of services in International Class 37 and 3) amended the identification of goods in International Class 9. Items 1 and 2 are acceptable and have been entered. The applicant’s amended identification of goods in International Class 9 remains unacceptable and the requirement for an acceptable identification is made final.

IDENTIFICATION OF GOODS - FINAL

The wording “process control systems” in the identification of goods remains unacceptable as overly broad. The applicant must amend the identification to list each component of the system by its common commercial name. TMEP §§1401.04(b), 1402.01 and 1402.03.

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).

The applicant may amend this wording to the following, if accurate.

INTERNATIONAL CLASS 9

Electric and electronic accessories for printing machines and bookbinding machines, namely process control systems comprising computer hardware, computer networking hardware and computer peripherals for use with printing machines and bookbinding machines and computer operating programs for use with printing machines and bookbinding machines.

TMEP §1402.01.

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.

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: process control systems. The application will then proceed with following goods and/or services only: “Machines for the graphic arts, namely printing machines and bookbinding machines and structural and replacement parts therefor,” “Electric and electronic accessories for printing machines and bookbinding machines; namely computer operating programs for use with printing machines and bookbinding machines comprising computer hardware, computer networking hardware and computer peripherals for use with printing machines and bookbinding machines,” and “Installation, maintenance and repair of printing machines and bookbinding machines; Installation and maintenance of process control systems comprising computer hardware, computer networking hardware and computer peripherals for use with printing machines and bookbinding machines.” 37 C.F.R. §2.65(a).

PROPER RESPONSE TO FINAL ACTION

If applicant does not respond within six months of the mailing date of this final action, then the following goods to which the final requirement applies will be deleted from the application: “process control systems.” The application will proceed forward for the remaining goods and services. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

Applicant may respond to this final action by:

(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Barbara Brown/

Trademark Examining Attorney, LO 116

TEL: 571-272-9134

FAX: 571-273-9116

barbara.t.brown@uspto.gov (informal)

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

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.