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. 1008602

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).

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

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

 

I.  NO CONFLICTING MARKS:

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.  However, the applicant must respond to the following informalities.

 

II.  IDENTIFICATION OF GOODS/SERVICES - Indefinite in Part:

 

The identification of goods and/or services is unacceptable as indefinite in part because it lacks sufficient specificity and because the parenthesis must be removed.  See TMEP §1402.01.  Accordingly, applicant may adopt the following identification, if accurate:

 

-         Centrifugal pumps; pumps being parts of machines, engines or motors; lubricating pumps; vacuum pumps being parts of machines; pumps for heating installations; hydraulic pumps; valves being parts of machines; hydraulic valves being parts of machines, in International Class 7.

 

PLEASE NOTE:  The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant.  Given the indefinite nature of the goods/services, the examining attorney is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action.  It is the applicant's duty and prerogative to identify the goods and services. TMEP section 1402.01(e).

 

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 www.uspto.gov.

 

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.

 

III.  COLOR STATEMENTS:

 

Applicant has submitted a color mark and all color marks must be supported by statements indicating the (1) colors claimed as a feature of the mark and (2) a description of where the colors appear in the mark.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq.  These statements were not submitted by the applicant.  The applicant may accept the following, if accurate:

 

The color blue is claimed as a feature of the mark.

 

The entire mark is in the color blue.

 

Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(a)(ii).

 

IV.  CONCLUSION:

 

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

 

Please note, if the applicant needs representation by an attorney due to the technicalities involved in the application, the Patent and Trademark Office cannot aid in the selection process.  37 C.F.R. §2.11.  Please see below regarding who can represent the applicant.

 

Please note:  All of the issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

 

 

 

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.

 

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.