UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/088187
APPLICANT: CABLE AND WIRELESS PLC
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: BLUEFIELD
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/088187
This letter responds to the applicant’s communication filed on 9 November 2004.
The amended identification of good is unacceptable for the following reasons. The requirement for an acceptable, definite identification of goods is repeated and is hereby made FINAL.
The identification of goods is unacceptable because of the indefinite terminology "scientific, surveying, electric, photographic, cinematographic, optical, weighting, measuring, signaling, checking (supervision) and teaching apparatus and instruments," "information technology," "telecommunications apparatus, instruments, networks, including such for enabling, facilitating and routing connections to databases, computer networks and the global computer network," "electronic data communications apparatus and instruments," "electronic apparatus and instruments, all for the management and/or performance and analysis of telecommunications and data communications networks and circuits," "electronic apparatus and equipment for sending, transmitting and/or receiving data, information, pictures, images and/or sounds," "electronic apparatus and instruments for the retrieval, collection, processing, logging, storing, transmitting, reception, display and/or printing out of communication signals, data and information," “apparatus and instruments for recording, receiving and/or transmitting video and/or sound signals and/or data and/or information," "interactive electronic apparatus and instrument for telecommunication, transmission and reception of data, pictures or images and/or sounds and for ordering goods and/or services," "apparatus and instruments for debiting and/or crediting financial accounts and for paying for goods and services," "apparatus, instruments for communicating with and in computer networks" "television, radio, video and audio apparatus, equipment and devices," "apparatus for encrypting and decrypting electronic, video and/or sound signals and/or data," "parts and fittings for all the aforesaid goods" and “paper.” The applicant must therefore amend the identification to list the specific apparatuses, equipment, instruments and devices included, the specific technology included, the specific components of the networks, the specific parts and fittings included, and the specific type of paper included. TMEP section 804.
The wording “computer software for allowing users to perform electronic business transactions on-line or via a computer network or the global computer network” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “computer e-commerce software to allow users to perform electronic business transactions via a global computer network,” if accurate. TMEP §1402.11.
The wording "recording discs" in the identification of goods is unacceptable as indefinite. The
applicant may amend this wording to "blank computer discs," if accurate. TMIEP section 804.
The wording "computer programs and software," “computer programs and software supplied on or for browsing on the Internet and for a global computer network or the Internet,” “software for communicating with and in computer networks” and "telecommunications software" in the identification of goods is unacceptable as indefinite. The applicant must indicate not only that the goods are computer programs but also the purpose or function of the program. TMEP section 804.03(b). This additional information is necessary to permit this Office to reach judgements concerning possible conflicts between the applicant's mark and other marks. See In re Linkvest S'.A., 24 USPQ2d 1716 (TTAB 1992). In this case, the following formulation appears to be appropriate: Computer programs and software for (identify function) for use in (identify field of use), Downloadable computer search engine software, and Telecommunications software for (identify function). The applicant must amend to adopt this identification, if appropriate.
The wording "computer telephony software, including answering machines, voice mail" in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 804.
The wording "electronic publications in the nature of magazines, books, directories, brochures, leaflets, circulars downloadable from a computer network or the global computer network or provided on-line from databases on a computer network or the global computer network" in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to "electronic publications in the nature of magazines, books, directories, brochures, leaflets, circulars in the field of (identify subject matter) downloadable from a computer network or the global computer network," if accurate. TMEP section 804.
The wording “magnetically encoded debit cards” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “magnetically encoded debit cards containing programming used to (specify function and field of use),” if accurate. TMEP §1402.01.
The wording “digital music (downloadable) provided from computer networks or from global computer network web sites” in the identification of goods is unacceptable because parentheses have an internal office editing function. The applicant must therefore amend the identification to delete the parentheses. The applicant may amend this wording to “downloadable digital music provided from computer networks or from global computer network web sites,” if accurate. TMEP §1402.01.
The wording “printed matter, namely, magazines, books, directories, brochures, leaflets circulars” in the identification of goods is unacceptable as indefinite because the subject matter is not identified. The applicant may amend this wording to “printed matter, namely, magazines, books, directories, brochures, leaflets circulars featuring (identify subject matter),” if accurate. TMEP §1402.01.
The wording "cards in the form of debit cards, credit cards, charge cards and telephone cards" in
The identification of goods is unacceptable as indefinite. The applicant may amend this wording to
"debit cards without magnetic coding, credit cards, charge cards and telephone calling cards not
magnetically encoded," if accurate. TMEP section 804.
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://tess2.gov.uspto.report/netahtml/tidm.html.
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.
The amended recitation of services is unacceptable for the following reasons. The requirement for an acceptable definite recitation of services is repeated and is hereby made FINAL.
The wording “advertising and promotion services and information services relating thereto; marketing; financial services; check guarantee card services, investment services; electronic market-making; telecommunication services; Internet services, providing access to information, and data; providing access to information (including web pages), computer programs and any other data; ATM services; DSL services; interactive electronic communication services; network services; provision of World Wide Web communication facilities and structures; access to fiber optic cables; fiber-optic and computer terminal networks; entertainment services, distance-learning services; corporate hospitality; provision of facilities for electronic and/or on-line discussions, conversion and learning; television, video and entertainment services; technical project studies; computer services; information provided on-line from a computer database or from a computer network or the global computer network; searching and retrieving information, data and websites on or from computer networks; industrial research; facilitating sales of goods through e-commerce and distribution of content consisting of audio and/o visual reproductions over a computer network or the global computer network" in the recitation of services is too broad because it could include services classified in other classes. The applicant must amend the identification to list each service by its common commercial name. TMIEP section 1301.05.
The wording “advertising agencies, namely, promoting the services in the field of telecommunications through the distribution of printed and audio materials and by rendering sales promotion advice” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “advertising agencies, namely, promoting the services of those in the field of telecommunications through the distribution of printed and audio materials and by rendering sales promotion advice,” if accurate. TMEP §1402.11.
The wording “computer automated telecommunications answering services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “computer automated telephone answering services,” if accurate. TMEP §1402.11.
The wording “clearing services for financial instruments” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “financial clearing houses,” if accurate. TMEP §1402.11.
The wording “services for debiting and crediting financial accounts” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “accounts payable debiting services,” if accurate. TMEP §1402.11.
The wording “construction services relating to computer hardware, telecommunications apparatus and equipment” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “custom manufacture of computer hardware, telecommunications apparatus and equipment in Class 40,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 40. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
The wording “chat rooms” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “providing on-line chat rooms for transmission of messages among computer users concerning [indicate field or subject of chat room],” if accurate. TMEP §1402.11.
The wording “providing on line electronic bulletin boards for transmission messages among computer users” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “providing on-line bulletin boards for transmission of messages among computer users concerning [indicate field or subject of bulletin boards,” if accurate. TMEP §1402.11.
The wording “frame relay services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “providing frame relay connectivity services for data transfer,” if accurate. TMEP §1402.11.
The wording “providing network based storage of multimedia materials” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “electronic storage of files and documents in Class 39,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 39. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
The wording “providing network-based management and retrieval of multimedia materials” and “searching and retrieving information, data and websites on or from computer networks” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “Computer service, namely, acting as an application service provider in the field of knowledge management to host computer application software for searching and retrieving information from databases and computer networks in Class 42,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
The wording “facilitating electronic commerce and acceptance and verification of debit cards and credit cards” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “signal transmission electronic commerce via telecommunication systems and data communication systems in Class 38,” if accurate. TMEP §1402.11.
The wording “communication satellite services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “satellite transmission services,” if accurate. TMEP §1402.11.
The wording “including web hosting” and “hosting web sites” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “Hosting the web sites of others on a computer server for a global computer network in Class 42,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
The wording “educational services, namely, arranging and conducting seminars” and “training” in the recitation of services is unacceptable as indefinite because the subject matter is not identified. The applicant may amend this wording to “educational services, namely, arranging and conducting seminars on (identify subject matter), and Training in (area of training)” if accurate. TMEP §1402.11.
The wording “search engine services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “Computer services, namely, providing search engines for obtaining data on a global computer network,” if accurate. TMEP §1402.11.
The wording “providing on-line publications” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “Providing on-line nondownloadable [indicate specific nature of publication] in the field of [indicate subject matter of publication] in Class 41,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 41. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
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://tess2.gov.uspto.report/netahtml/tidm.html.
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 services that are not within the scope of the services recited in the present identification.
Classification
The applicant must properly classify the amended goods and services. The applicant is referred to the above noted web site for guidance with respect to classification of goods and services. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Combined Applications
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on a foreign registration under Trademark Act Section 44(e):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); 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) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
The statement regarding the significance of BLUEFIELD, the certificate of foreign registration and the deletion of Section 1(b) as a basis are accepted and have been made of record.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
Katherine Stoides
Trademark Examining Attorney
Law Office 110
(571) 272-9230
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.