Notation to File

Response Requested: Trademark Application Serial No. 88551012 GRABBER   re: Trademark Application Serial No. 88551012  GRABBER   Dear Caldwell A. Camero, Esq.:   I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email.    Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.   Advisory: Summary of Issues   1.      Requirement: Identification of Goods 2.      Requirement: U.S. Licensed Attorney Attestation 3.      Requirement: U.S. Licensed Attorney Bar Information   Requirement: Identification of Goods   The goods are:  “Test clips,” in Class 009.    The identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.  See TMEP §§1402.01, 1402.03.    If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.   Class 006:            Metal cable clips, namely, test clips   Class 009:            Electrical connections, namely, test clips   Class 020:    Non-metal cable clips, namely, test clips   TMEP §1402.01.   Advisories   Applicant has claimed ownership of U.S. Registration No. 1369979, which has the identical identification of goods as in the present application, namely, “Test clips.”  Please note that descriptions of goods found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14.    The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.   Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).   Multiclass Advisories   The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:   (1)  List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).   (2)          Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.   (3)  Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.   (4)  Submit a specimen for each international class.  The current specimen is acceptable for classes 006, 009 and 020.  See more information about specimens.           Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.