UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

 

INTERNATIONAL REGISTRATION NO. 0964230.

 

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 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 United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, 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.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

INFORMALITIES

 

ENTITY (Legal Nature) AND COUNTRY OF ORGANIZATION OMITTED

 

The application does not include applicant’s “Legal Nature” and “Legal Nature:  Place Incorporated.”  Applicant must specify its entity type (“Legal Nature”) and citizenship (“Place Incorporated”).  37 C.F.R. §2.32(a)(3); TMEP §§803.03, 803.04.

 

Acceptable entity types include an individual, a partnership, a corporation or a joint venture.  See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. 

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  If applicant’s entity type is a corporation or association, applicant must set forth the country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04.  If applicant’s entity type is a partnership or joint venture, applicant must specify the country under whose laws the partnership or joint venture is organized.  37 C.F.R. §2.32(a)(3)(ii)-(iii); TMEP §§803.03(b), 803.04. 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

 

The wording in the identification of goods or services is indefinite and must be clarified because of the following:  See TMEP §§1402.01, 1402.03. 

 

“Machines, machine parts and machine fittings,” are indefinite as applicant must specify the type of machines.

 

The identification of services is indefinite and must be clarified because it includes the open-ended wording “including.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

“Apparatus for locomotion by land, air or water,” is indefinite as applicant must specify the type of apparatus.

 

Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

 

Applicant may adopt the following identification, if accurate: 

Class 007:  Earth moving machines and structural parts therefor for soil cultivation and earth moving, in particular in the fields of agriculture and forestry.

 

Class 012:  Vehicles, namely, All-terrain, self-propelled tracked carriers and tractors for use in agriculture and forestry, and structural parts therefor; apparatus for locomotion by land, air or water, namely, boats.

 

Class 044:  Rental of agricultural and forestry equipment

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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 the International Bureau assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b). 

 

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.  See TMEP §1402.04.

 

 

 

 

/Kapil K. Bhanot/

Trademark Examining Attorney

Law Office 108

Phone - (571) 270-1516

Fax No. (571) 270-2516

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.