Offc Action Outgoing

This is a PROVISIONAL PARTIAL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application that applies to only the following goods and services in the application: “laser range-finders (not for medical use) and line lasers (not for medical use); rotation lasers, not for medical use; leveling instruments namely laser leveling instruments (not for medical use); detectors; apparatus for recording distances; scientific, photographic, cinematographic, optical, signaling and controlling apparatus and instruments; computer software (recorded programs)” in International Class 9 and all services listed in International Class 35. See 15 U.S.C. §1141h(c).

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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 APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:

Please note that this is a partial refusal Office action. In other words, the refusal(s) and/or requirement(s) in this Office action apply only to specified goods and services in the U.S. application.

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

Search of the Records

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 and Services

Regarding International Class 9, applicant must specify the exact nature of the following goods: “line lasers (not for medical use); rotation lasers, not for medical use;” “detectors;” “apparatus for recording distances;” “scientific, photographic, cinematographic, optical, signaling and controlling apparatus and instruments;” and “computer software (recorded programs).” TMEP §1402.01.

Regarding International Class 35, the word “sales” is indefinite and must be clarified. TMEP §§1402.01 et seq. To be a service, an activity must be primarily for the benefit of someone other than the applicant. See In re Reichhold Chemicals, Inc., 167 USPQ 376, 377 (TTAB 1970). “Sales” or “selling” is not a service rendered for the benefit of others. See TMEP §1301.01(a)(ii).

Therefore, applicant must delete “sale(s)” and indicate with greater specificity the nature of the service. Applicant must also use another term besides “assorting” because it is unclear what the applicant means by the use of that term. When an applicant has submitted an unacceptable identification of goods and/or services, it is Office practice to suggest acceptable substitute wording. In this case, however, the trademark examining attorney is unable to suggest substitute wording because the nature of the services is unclear from the application record. TMEP §1402.01(e).

The identification of goods and services contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.

Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.

Applicant may adopt the following identification of goods, if accurate:

International Class 9: Measuring apparatus and instruments namely laser range-finders, not for medical use and inclinometers; lasers, not for medical use; laser pointers, not for medical use; line lasers for {applicant must specify the use of the lasers}; rotation lasers{applicant must specify the use}; leveling instruments namely laser leveling instruments for {applicant must specify the use}; detectors for {applicant must specify what is being detected}; apparatus for recording and measuring distances; X-ray apparatus, not for medical use; wall scanners; scientific, photographic, cinematographic, optical, signaling and controlling apparatus and instruments, namely, {applicant must specify, e.g., sensing and signaling devices for measurement and quality control of materials processing by laser}; computer software recorded on media for {applicant must specify the use or purpose of the software and if applicable, the field or subject matter}; computer hardware

International Class 35: Retail store services including retail store via global computer networks featuring general merchandise; {applicant must specify the type of service by the common commercial name} different goods not including transporting them for third parties to make it easier for customers to view and purchase these goods from a wholesale trader

TMEP §1402.01.

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.

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b). Therefore, the applicant may only amend an identification to include goods or services, properly within the scope of the present wording, that are properly classified in the current classification.

Advisory—Potential Partial Abandonment

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application: ““laser range-finders (not for medical use) and line lasers (not for medical use); rotation lasers, not for medical use; leveling instruments namely laser leveling instruments (not for medical use); detectors; apparatus for recording distances; scientific, photographic, cinematographic, optical, signaling and controlling apparatus and instruments; computer software (recorded programs)” in International Class 9 and all services listed in International Class 35.

The application will then proceed with following goods only: “measuring apparatus and instruments namely inclinometers; lasers, not for medical use; laser pointers, not for medical use; X-ray apparatus, not for medical use; wall scanners; computer hardware” in International Class 9. 37 C.F.R. §2.65(a).

Response Guidelines

No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. Please note that all electronic communications must be signed using the "/name/" format. TMEP Section 804.05.

Applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. 37 C.F.R. §10.14; TMEP §602. 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.

Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>. When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to office actions.

PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax. TMEP 306.04; Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

/mdi/

Marilyn D. Izzi

Trademark Examining Attorney

Law Office 112

(571) 270-1523 (phone)

(571) 270-2523 (fax)

<http://www.gov.uspto.report/teas/index.html> (file responses)

marilyn.izzi@uspto.gov (submit questions only)

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.