Offc Action Outgoing

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  79/029305

 

INTERNATIONAL REGISTRATION NO. 0899472  

 

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).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:

 

(1)   Attorneys in good standing with the bar of any U.S. federal court or the highest court of any U.S. state, and

 

(2)   Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). 

 

37 C.F.R. §10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney will be considered an incomplete response.  TMEP §§602, 602.03, 603.05.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

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

NO CONFLICTING 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.

 

OWNERSHIP CLAIM OF PRIOR REGISTRATION

 

If applicant is the owner of U.S. Registration No. 2317705, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2317705.

 

 

REQUIREMENT WHEN THE APPLICANT ENTITY IS A PARTNERSHIP

If the applicant is a partnership, the applicant must amend the preamble of the application to read as follows:  "              , a partnership organized under the laws of                  , composed of _____________."  "  The applicant must list all general partners and their national citizenship or the state or country of their organization or incorporation, as appropriate.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP section 802.03(b). 

In this case the applicant omitted to identify the country under whose laws the partnership was organized as well as the general partners and their national citizenship.

CITIZENSHIP OF THE ENTITY WAS OMMITTED

Applicant must specify its country of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.

IDENTIFICATION OF GOODS AND SERVICES - INDEFINITE

The wording "switching electric devices" in the identification of goods and services is unacceptable as indefinite because the applicant failed to identity the devices in question.  The applicant must amend the identification to specify the common commercial name of the goods and services. If there is no common commercial name for the goods and services, the applicant must describe the goods and services and indicate their nature.  TMEP section 1301.05.

 

Please note that the reminder of the identification is acceptable as submitted.

INCLUDE ONLY GOODS AND SERVICES THAT ARE WITHIN THE SCOPE OF THE ORIGINAL IDENTIFICATION

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. Section 2.71(b); TMEP section 804.09.  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.

 

PLEASE NOTE:  All of the issues raised can be resolved by telephone, via fax or via e-mail.  The applicant may telephone or e-mail the examining attorney, to expedite the application.

 

 

 

Florentina Blandu, Esq.

/FBLANDU/

l.o.117

tel. (571) 272-9128

fax (571) 273-9128

e-mail florentina.blandu@uspto.gov (for informal communications)

 

 

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.