UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing  date, this case will be given priority handling.  TMEP §708.01.

 

OFFICE RECORDS SEARCH:  The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number  76/025800

 

The following were discussed in communication with Martin Hoffman on July 14, 2005.  Applicant must respond to each refusal and/or requirement raised below.

 

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN.

 

Identification of Goods

 

The goods include computer programs.  Applicant must indicate the purpose(s) or function(s) of the computer program(s).  If the software is field-specific, then applicant must also specify the field of use.  TMEP §1402.03(d).  This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks.  See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).  The applicant must also specify the nature of some of the goods.

 

For easier reference, the goods requiring amendment and suggested amendments are shown in italics.

 

The applicant may adopt the following identification, if accurate: 

 

Computer software relating to the field of transportation, logistics, supply chain management and warehousing, namely, computer software for (SPECIFY function/use, e.g., use in tracking freight shipment and delivery status, etc.); computer firmware relating to the field of transportation, logistics, supply chain management and warehousing, namely, computer firmware for (SPECIFY function/use, e.g., use in tracking freight shipment and delivery status, etc.); computer operating systems; computer network systems comprising computer and computer peripherals, computer power supplies, computer cases, computer key boards, computer monitors, cables, communications servers, computer routers, in international class 9.

 

TMEP §1402.01.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of  Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

The identification of services in international classes 35, 37, and 42 are acceptable.

 

The likelihood of confusion refusal is withdrawn as are all citations to prior pending applications.  They have all been cancelled or abandoned.

 

The foreign registration is accepted.  The application will proceed under Sections 1(b) and 44(e).

Failure to Respond—Abandonment of Specific Goods/Services

 

If applicant should fail to respond to this Office action within the six month time limit, then all goods/services will be DELETED from the application EXCEPT: (and the application will proceed with the following goods/services only):   

 

Computer operating systems; computer network systems comprising computer and computer peripherals, computer power supplies, computer cases, computer key boards, computer monitors, in international class 9;

 

The services in classes 35, 37, and 42.

 

37 C.F.R. §2.65(a).

 

 

 

/Alex S. Keam/

Attorney

Law Office 114

Phone: (571) 272-9176

Fax for Responses: (571) 273-9114

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm