UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/041810
MARK: GK
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Harburg-Freudenberger; Maschinenbau GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0932505.
This is a PROVISIONAL FULL REFUSAL of the trademark 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 USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of 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). Canadian attorneys can only represent Canadian applicants.
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 is 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:
Search Results
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.
However, applicant must address the following issues.
Identification of Goods
The current wording used to describe the goods needs clarification because it is indefinite. TMEP §1402 and 1402.03.
In Class 7, applicant must clarify the nature of its “hydraulic aggregates.”
In Class 9, applicant must list particular apparatus and instruments.
In Class 11, the word “system” is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system. Applicant should use common generic terms when specifying the parts or components of the system. TMEP §1402.03.
Throughout the identification, applicant must replace the indefinite wording “and/or” and “including” with the definite wording “and,” because the identification must be clear, concise, and all-inclusive.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b).
Therefore, any modification to this wording must identify goods in International Classes 7, 9, and 11, the classification specified in the application for these goods.
Applicant may adopt the following identification of goods, if accurate:
“Electric and hydraulic powered internal mixing machines for production of semi-manufactures and parts and accessories therefor, namely reduction gears, couplings, drive motors and hydraulic aggregates in the nature of [applicant must provide further description or common commercial name]” in International Class 7
“Memory programmable, electrical and electronic apparatus and instruments for controlling, regulating and monitoring electric and hydraulic powered internal mixing machines for production of semi-manufactures, namely, [applicant must specify, e.g., electronic control systems for machines]” in International Class 9
“Cooling systems as parts of electrical temperature control machines heated with thermal oil and steam for electric and hydraulic powered internal mixing machines for production of semi-manufactures comprising [applicant must specify major components of systems, e.g., evaporative air coolers]” in International Class 11
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.
For assistance with identifying and classifying goods 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 there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
/Kristina Morris/
Examining Attorney
United States Patent and Trademark Office
Phone: (571) 272-5895
Fax: (571) 273-9116
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.