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. 1009679

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:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

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

 

Applicant must respond to the following requirements.

 

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).

 

Applicant should use semicolons (;) to separate disparate goods/services.  Misuse of the semicolon may result in further confusion and ambiguity and therefore, further required amendments.  The comma (,) should be used to separate lists of goods in a category, generally following the prefaces “namely,” “consisting of,” “featuring,” or comprised of,” etc.

 

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:

 

“Agricultural machines; saws (machines); hand-held tools, other than hand-operated; metalworking machines; gasoline engine (other than for land vehicles); pumps (machines); machines and apparatus for cleaning; scarifiers; dynamos; welding machines, electric.”

 

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:

 

“Agricultural machines, namely, {indicate specific implements, such as cultivators, harvestors, disk harrows, seeders, etc.}; saws machines; hand-held tools, other than hand-operated, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME i.e., hand-held battery actuated hydraulic crimp tool}; metalworking machines; Gasoline engines not for land vehicles; pumps NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME i.e., vacuum pumps}; machines and apparatus for cleaning, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME, i.e., Floor cleaning machines}; Earth moving machines, namely, scarifiers; dynamos; Electric welding machines.” in Class 7

 

Class 8

 

Applicant filed the following identification:

 

“Abrading instruments (hand instruments); weeding forks (hand tools); garden tools (hand-operated); hand tools, hand-operated; drills; masons' hammers; tree pruners.”

 

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:

 

“Abrading tools; weeding forks; garden tools, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME, i.e., cultivators}; Hand tools, namely, {specify item e.g., planers, drills, shovels}; Hand tools, namely, drills; Hand tools, namely, masons' hammers; Manually operated tree pruners.” in Class 8

 

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.

 

Identifications of goods and/or services 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.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services 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 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’s description of the mark is inaccurate and must be deleted.  Applicant may request that the examining attorney delete the description of the mark from the record.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Trademark Attorney

Law Office 103

571-272-2651

 

 

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.