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 examining attorney has reviewed the referenced application and has determined the following.

Search Results:

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.

Informal Issues:

Entity (Legal Nature) and/or 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.

Color Claim and Color Description – Clarification Required:

Applicant has submitted a color drawing, but has not provided the required color claim and color location statement. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).

Applicant must submit both a color claim and color location statement using the following format:

(1) Color claim: “The color(s) red and white claimed as a feature of the mark.”; and

(2) Color location statement: “The mark consists of the letters “FX” in the color white surrounded by a red circle; the upper right extension of the letter “X” intersects the perimeter of the circle.”

TMEP §807.07(a)(i)-(a)(ii).

Identification of Goods and Services – Clarification Required:

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 wording “” in the identification of good and services is indefinite and must be (1) clarified to specify the common commercial or generic name for the goods and/or services, or (2) deleted. TMEP §§1402.01 and 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 and services. In the identification of goods and services, applicant must use the common commercial or generic name for the goods and services, be specific and all-inclusive, and avoid using indefinite words or phrases. Id. 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. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a). The applicant may aid in clarifying the indefinite term by following the indefinite subject matter with “namely, [specify goods/services by generic or common commercial name and field of use].”

The wording “_____” in the identification of goods needs clarification because it is too broad and could include goods classified in other international classes. TMEP §§1402.01 and 1402.03. Applicant must clarify the identification of goods to specify the nature of the goods as well as their main purpose and their particular field of use or channels of trade. TMEP §1402.01. The applicant may aid in clarifying the indefinite term by following the indefinite subject matter with “namely, [specify goods by generic or common commercial name and field of use].” Please note: 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 in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b). Therefore, any modification to this wording must identify goods in properly classified in the original International Class specified in the application for these goods.

Please note: In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font. Applicant may adopt the following identification of goods and services, if accurate:

Class 07: “Textile machines, namely open-end rotor spinning machines, ring spinning machines, air spinning machines, winding machines, cabling machines, twisting machines, as well as workstations comprising said textile machines and structural parts of said textile machines, namely winding devices, yarn monitoring devices, yarn piecing devices, yarn traversing devices, yarn cutting devices, yarn preparing devices, unwinding support devices, control devices” and

Class 09: “Parts of textile machines, namely measuring devices for measuring [specify, e.g., length], monitoring devices, namely [specify nature of device within International Class 09], display devices, namely [specify nature of device within International Class 09], operating devices, namely [specify nature of device within International Class 09], recording devices, namely [specify nature of device within International Class 09], information processing devices, namely [specify nature of device within International Class 09], input devices, namely [specify nature of device within International Class 09], switching devices, namely [specify nature of device within International Class 09], open and closed loop control devices for textile machines, namely [specify nature of device within International Class 09]”

§66 (a) Applications – Classification for Good/Services cannot be Changed (Advisory)

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 in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b).

PTO Online Searching Manual:

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at http://tess2.gov.uspto.report/netahtml/tidm.html.

Please also note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

Responding to This Office Action:

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.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Dominic Fathy/

Trademark Examining Attorney

Law Office 108

571-272-8801 (phone)

571-273-8801 (fax)

dominic.fathy@uspto.gov

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.