To: | FIREX S.r.l. (fbraga@perani.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 79114099 - FIREX - W003177/SAP/ |
Sent: | 1/2/2013 12:01:57 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79114099
MARK: FIREX
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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: FIREX S.r.l.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
ISSUE/MAILING DATE: 1/2/2013
THIS IS A FINAL ACTION.
INTERNATIONAL REGISTRATION NO. 1119355
The examining attorney acknowledges the response to the office action. The information requirement is satisfied. Requirement for an acceptable description of goods is made FINAL.
The wording “drying apparatus and installations;” was amended to: “drying apparatus for use in heating, ventilation systems; air conditioning systems and refrigeration systems;” (emphasis added.)
It appears that the semicolon between “ventilation systems” and “air conditioning systems” should be replaced with a comma. Semicolons denote distinct goods. It appears applicant attempted to add the Identification of Goods Manual entry “Drying apparatus for use in heating, ventilation systems, air conditioning systems and refrigeration systems.” Such an amendment would be acceptable. However, the semicolon between “ventilation systems” and “air conditioning systems” must be replaced with a comma.
As the amendment stands, “Air conditioning systems and refrigeration systems” is not modified by the “drying apparatus for use…” and is unacceptable as a broadening of scope of the goods. Thus, amendment is required. Replacement of the semicolon with a comma, as discussed above, will cure this issue. Applicant is encouraged to contact the examining attorney via phone or email to resolve this issue.
The scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
In addition, 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 §§1402.01(c), 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); TMEP §§1401.03(d), 1402.01(c).
Applicant must amend this wording to substitute goods and/or services in International Class 11 that are within the scope of the goods and/or services in the application as filed. See TMEP §§1402.07(a), 1904.02(c)(iv). In the alternative, applicant may delete the unacceptable wording from the identification. See TMEP §1904.02(c)(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not be later re-inserted. TMEP §1402.07(e).
The application will then proceed for the remaining goods in classes 7 and 11 only.
Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Daniel F. Caphaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.