Offc Action Outgoing

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:

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1009679

 

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.

 

The following issues on this application have been resolved.

1. Description of the Mark Requirement

 

However, the requirement for AN AMENDED IDENTIFICATION is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

PLEASE NOTE:  Applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised below by authorizing an examiner’s amendment.

 

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 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

 

Identification acceptable as AMENDED.

 

Class 8

 

Applicant filed the following identification:

 

Abrading instruments (hand instruments); weeding forks (hand tools); garden tools (hand-operated), namely, rakes, shovels, forks, cultivators and grafting tools used in gardening; hand tools, hand-operated, namely, hand drills (hand tools), scraping tools (hand tools), milling cutters (hand tools), rams (hand tools); drills; masons' hammers; tree pruners.

 

In response to the examining attorney’s requirement for an amended identification, applicant submitted the following:

 

Abrading tools; weeding forks; garden tools, namely, rakes, shovels, forks, cultivators and grafting tools used in gardening; hand tools, hand-operated, namely, hand drills, scraping tools, milling cutters, rams; drills; Masons' hammers; manually operated tree pruners

 

Some of the wording in the AMENDED 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, rakes, shovels, forks, cultivators and grafting tools used in gardening; hand tools, hand-operated, namely, hand drills, scraping tools, NAMELY, SCRAPERS, milling cutters, rams; HAND TOOLS, NAMELY, drills AND 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).

 

Proper Response to Final Action – Partial Refusal(s)/Requirement(s)

 

If applicant does not respond within six months of the mailing date of this final Office action, the goods and/or services/class(es) to which the final requirement(s) apply will be deleted from the application by Examiner’s Amendment:  The application will then proceed for the remaining goods and/or services/class(es).  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by: 

 

(1)   Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)   Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a);

 

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.