UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/069715
MARK: GMATT
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: MITSUBISHI HEAVY INDUSTRIES, LTD.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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. 1004886
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 who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).
37 C.F.R. §§11.1, 11.14; 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:
Identification of goods/services
General Guidelines
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).
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.
According to the Manual of Acceptable Identifications of Goods and Services, parenthetical information is not required to be placed in applicant’s identification of goods and services.
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 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 the following wording must identify goods and/or services in the classification the International Bureau assigned to the goods and/or services in the corresponding international registration.
Unacceptable identification
PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold. If the recommended changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information into the amended description.
Class 7
Applicant filed the following identification:
“Metalworking machines, namely, machining centers; cutting tools including mechanical blade; metal-forming machine tools; metalworking machine tools; latches; reamers; inserts for metalworking machine and tools; tool holders for metalworking machines (machine parts); gear cutters; milling cutters; end mills; millers; lathe cutting tools; drills.”
Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear. See TMEP §§1402.01, 1402.03.
The following substitute identification with amended wording is suggested, if appropriate:
Metalworking machines, namely, machining centers; machine parts in the nature of cutting tools namely, mechanical blade; metal-forming machine tools; metalworking machine tools, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; latches, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME as metal latches are classified in International Class 6 and an item the applicant may not adopt}; power tools, namely, reamers; bearing inserts for metalworking machine and tools; tool holders for metalworking machines, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; gear cutters; milling cutters; end mills; millers, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; lathe cutting tools; electric drills {please note that drills by itself as an entry may be classified in International Class 8 as dental drills—as such the wording drills by itself if vague}.” in Class 7
Class 42
Applicant filed the following identification:
“Testing or research on metalworking machines and machine tools.”
Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear. See TMEP §§1402.01, 1402.03.
The following substitute identification with amended wording is suggested, if appropriate:
“Mechanical research and testing, namely, research on on metalworking machines and machine tools.” in Class 42
IDENTIFICATION MANUAL AND SCOPE ADVISORIES
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.
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. 37 C.F.R. §2.85(d);TMEP §§1401.03(d), 1904.02(b).
DESCRIPTION OF THE MARK
Applicant must submit a concise description of the mark. 37 C.F.R. §2.37; see TMEP §§808 et seq. The following is suggested:
The mark consists of {THE APPLICANT MUST DESCRIBE AND DESIGNATE THE LOCATION OF ALL THE LITERAL AND DESIGN AND COLOR ELEMENTS OF THE PROPOSED MARK}.
/Napoleon K. Sharma/
Trademark Examining Attorney
Law Office 107
571-272-3387
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.