UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 79/044769
MARK: INSPECTOR
|
|
|
CORRESPONDENT ADDRESS: F-75008 PARIS |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
|
|
APPLICANT: ECA
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. 0939959.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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 as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and
(2) Canadian attorneys who represent applicants residing in Canada and 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.
Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO. See TMEP §602.06(b). 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, 603.04, 605.05(a).
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
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.
Identification of Goods
The wording in the identification of goods for International Class 9 is indefinite and must be clarified because it is too broad. TMEP §§1402.01 and 1402.03.
In addition, the identification of goods is indefinite and must be clarified because it includes the open-ended wording “especially” and “such as.” TMEP §§1402.01 and 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”
The international classification of goods and/or services 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 and/or services 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 9 and 12, respectively, the classifications specified in the application for these goods.
The following substitute wording is suggested, if appropriate:
“Nautical apparatus for locating marine and submarine objects, namely, radar; metal detectors for industrial or military purposes; pressure gauges, temperature sensors and indicators, and distance measuring apparatus; sound locating instruments, namely, sonar, for measuring the sedimentary profile of marine subsoils; electromagnetic apparatus for the measurement of magnetic fields; seabed mapping, oceanography and hydrography apparatus, namely, marine compasses and marine depth finders” in International Class 9;
“Manned or unmanned marine surface vehicles, operated by remote control or self-contained, for the surveillance of shipping lanes, canals, coastal areas and ports, for submarine zone reconnaissance, seabed reconnaissance, seabed mapping, oceanography, hydrography, searching for, locating and destroying submarine objects, namely, mines, port protection, oil production site protection, surface ship interception, target towing, collecting, recording and transmitting measurements by radio” in International Class 12.
For assistance with identifying and classifying 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.
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.
A prompt response to this Office Action will expedite prosecution.
/Aisha Y. Salem/
Aisha Y. Salem
Trademark Examining Attorney
Law Office 113
Phone: (571) 272-8242
Fax: (571) 273-9113
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 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.