Offc Action Outgoing

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:

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

Search of the Office Records

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.

Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Significance of Wording

Applicant must explain whether “PHYSIX” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814.

Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

Deletion of Unregistrable Matter from Mark

Applicant must submit a new drawing with “®” deleted because it is not part of the mark. See TMEP §§807.02, 807.14(a).

A special form drawing submitted on paper must comply with the following requirements:

(1) Depict the mark in black on a white background, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.;

(2) Depict the mark using a pen or a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.; and

(3) Depict the mark no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.

37 C.F.R. §§2.52(b), (b)(1), 2.54(b), (d)-(e); see TMEP §§807.04(a)-(b), 807.07(a) et seq.

In addition to the above, the Office prefers that the drawing be on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm wide and 27.9 to 29.7 cm long). One of the shorter sides of the sheet should be the top edge and include the caption “DRAWING PAGE.” 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).

The Office strictly enforces the drawing requirements.

Special form drawings submitted electronically via the Trademark Electronic Application System (TEAS) must be attached as a digitized image file. The requirements for an electronically submitted special form drawing are as follows:

(1) The mark must appear in black on a white background, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.;

(2) All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.; and

(3) The digitized mark image must be in jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.

37 C.F.R. §§2.52(b), (b)(1), 2.53(b)-(c); TMEP §§807.05(b)-(c), 807.07(a)(i)-(a)(ii).

In addition to the above, the Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.

Identification of Goods

The wording “non included in other classes” in the identification of goods is indefinite and must be (1) clarified to specify the common commercial or generic name for the goods, or (2) deleted. See TMEP §§1402.01, 1402.03(a). This wording constitutes an open-ended “catch-all” word or phrase and is not acceptable because it fails to identify specific goods.

In the identification, applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a).

The wording “metal building materials,” “metallic fasteners,” and “audio, video and data processing equipment and parts therefor” in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes. See TMEP §§1402.01, 1402.03. Similarly, applicant must specify the type of “ores.”

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).

Therefore, any modification to this wording must identify goods and/or services in the International Class specified in the application for these goods and/or services.

The identification of goods is indefinite and must be clarified because it includes the open-ended wording “such as.” 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.”

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

The identification of goods and/or 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.

The applicant may adopt the suggestion in bold and brackets “{}” in the following identification, if accurate. If applicant does not adopt the suggestions, then the wording adopted by applicant must be as specific as the language found in the Manual of Acceptable Identifications of Goods and Services.

International Class 6—Common metals and their alloys; metal building materials, namely, {applicant must specify consistent with International Class 6, for example, “cladding,” “metal trim” or “fascia”}; transportable buildings of metal; non-electric cables and wires of common metal; pipes and tubes of metal; goods of metal not included in other classes, namely, {applicant must specify the exact goods consistent with International Class 6, for example, “baskets of common metals”}; {specify the type, for example, “zinc” or “iron”}ores; metallic fasteners, namely, {applicant must specify consistent with International Class 6, for example, “bolts,” “nails,” or “rivets”};

International Class 9—Audio, video and data processing equipment and parts therefor, namely, {applicant must specify the goods as found in International Class 9, for example, “radios” or “computers”}, parts and accessories for the aforesaid equipment namely, stands, pedestals and supports for loudspeakers, television apparatus and keyboards; signs, luminous; AND

International Class 20—Furniture for storing audio, video and data processing equipment; goods {applicant may delete (not included in other classes)” of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely, {applicant must specify the goods as found International Class 20, for example, “drawer pulls”}; clips of plastic, for cables and pipes.

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.

PLEASE NOTE: As indicated above, identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07(a), 1904.02(b). In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods and/or services in the international class(es) designated in the application as filed. See TMEP §§1402.03(d), 1402.07(a).

Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.

Response Guidelines

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

/MDI/

Marilyn D. Izzi

Trademark Examining Attorney

Law Office 112

marilyn.izzi@uspto.gov

P:(571) 270-1523

F:(571) 270-2523

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.