UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79099217
MARK: GEBERIT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Geberit Holding AG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
INTERNATIONAL REGISTRATION NO. 0571872
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 if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and 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 located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
DESIGNATION OF DOMESTIC REPRESENTATIVE:
The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/teas/index.html.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to this wording must identify goods in International Classes 6, 9, 17 and 19, the classification specified in the application for these goods.
The following substitute wording is suggested, if appropriate:
“Metal conduit, pipes and tubes for water supply and drainage; metal pipe clips, connectors, couplings, fittings, joints and strapping or tie-downs for mounting sanitary installations; metal drain pipes and gutters for roofs,” in class 6;
“Electromagnetic valves for controlling gas or fluids; electrical controlling devices; electronic controllers for (specify goods being controlled); measuring buckets, cups, glassware, rules, spoons and tapes; computer-controlled electronic apparatus for electrophysiological measurement and testing of cells; electric installations for the remote control of industrial operations; computer operating software; computer software for computer system and application development, deployment and management [the function and application of the software must be specified],” in class 9;
“Sanitary installations in the nature of steam rooms; pipes being parts of sanitary facilities; regulating accessories for water apparatus and pipes
“Non-metal seals for water pipe connections; rings of rubber for use as pipe connection seals; non-metal couplings for use with water hoses; non-metal flanges and hose fittings; non-metallic flexible pipes,” in class 17;
“Concrete pipes; ceramic drain pipes; non-metal gutter pipes; non-metal sewer and water pipes; rigid pipes, not of metal; clay or plastic conduit for drainage and irrigation; plastic conduit for roof drainage,” in class 19.
CLAIM OF OWNERSHIP OF REGISTRATIONS
Applicant is the owner of U.S. Registration Nos. 1811835 and 3910280.
PROPER RESPONSE
For this application to proceed toward registration, applicant must explicitly address each
requirement raised in this Office action. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
/Ira Goodsaid/
Ira Goodsaid
Trademark Examining Attorney
Law Office 101
571-272-9166
ira.goodsaid@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.