UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

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: 1/5/2011

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on December 15, 2010.

 

In the initial Office Action, the examining attorney refused registration under Section 2(d) of the Trademark Act.  In addition, the examining attorney required applicant to submit responses to its information requests and explain the significance of the mark.  Lastly, the examining attorney required applicant to further clarify its identification of goods. 

 

In its December 15, 2010 Response, applicant submitted arguments against the Section 2(d) Refusal.  In addition, applicant submit responses to the examining attorney’s information requests and explanation of mark’s significance.  Lastly, applicant amended its identification of goods.  Applicant’s responses have been received and been made of record.

 

After careful consideration of applicant’s arguments against the Section 2(d) refusal, the examining attorney is withdrawing the refusal.  In addition, the requirements that applicant submit information requests and explain the significance of the mark have been fulfilled.  However, after careful consideration of applicant’s amended identification of goods, the examining attorney is maintaining the requirement that applicant further clarify the identification of goods and now making the requirement FINAL.  See37 C.F.R. §2.64(a).

 

Classification and identification of goods-FINAL

 

The following requirement is now made FINAL.  See37 C.F.R. §2.64(a).

 

Applicant’s identification of goods at the time of filing its application was as follows:

 

standardized metric gears, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears; custon gears in International Class 7.

 

In the initial Office Action, the examining attorney required applicant to further clarify its identification of goods because it was vague and did not clearly identify the goods.

 

In its December 15, 2010 Response, applicant amended its identification of goods as follows:

 

standardized metric gears, toothed transmission wheels made in metric dimensions, namely spur gears, helical gears, racks, pinion gears, bevel gears, miter gears, worm gears and worm wheels, internal gears, and screw gears for use as internal components of machines and equipment to transmit motion; custom gears in International Class 7.

 

The amended identification of goods remains indefinite and must be clarified because it is vague and does not clearly identify the use of the goods.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

At the outset, the examining attorney notes that the wording “transmission wheels” and “worm wheels” cannot be accepted because it appears to refer to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  See 37 C.F.R. §2.71(a).  The wording “transmission wheels” and “worm wheels” appears to be outside the scope because the original identification of goods limited the goods to gears.  If accurate, applicant may amend the wording “transmission wheels” to “transmission gears.”  Identifications can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods and/or services is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07. 

 

In addition, applicant should further specify the exact function or use of the goods.  For instance, if the gears are for machines, applicant may indicate accordingly.  Furthermore, applicant should further specify the wording “equipment to transmit motion.”  For instance, if the wording is in the nature of linear motions machines for moving objects, applicant may indicate accordingly.

 

Alternatively, if the gears are for vehicles, applicant may indicate accordingly.  However, applicant should note that gears for vehicles are goods that are correctly classified in International Class 12.  See 37 C.F.R. §6.1.  If applicant retains these goods in the application, then applicant must comply with the multiple-class requirements stated elsewhere in this Office action.  See 37 C.F.R. §2.86; TMEP §§1403 et seq. 

 

If accurate, applicant may adopt the following identification of goods:

 

International Class 7:  standardized metric gears for {further specify the use or type, for example, machines}, toothed transmission gears made in metric dimensions, namely, spur gears, helical gears, racks, pinion gears, bevel gears, miter gears, worm gears, internal gears, and screw gears, all for use as internal components of machines and equipment to transmit motion in the nature of {further specify the wording, for example, linear motion machines for moving objects}; custom gears for {further specify the use or type, for example, machines};

 

International Class 12: standardized metric gears for {further specify the use or type, for example, vehicles}, toothed transmission gears made in metric dimensions, namely, spur gears, helical gears, racks, pinion gears, bevel gears, miter gears, worm gears, internal gears, and screw gears, all for use as equipment to transmit motion in the nature of {further specify the wording, for example, vehicles}; custom gears for {further specify the use or type, for example, vehicles}.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least two classes; however, the fees submitted are sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Response guidelines

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  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); 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).

 

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

 

 

/Ameen Imam/

Trademark Examining Attorney

Law Office 113

Phone (571) 272-1942

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  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.

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 1/5/2011 FOR

SERIAL NO. 85096099

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 1/5/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.