UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/125773
APPLICANT: Corillian Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: CORILLIAN ONESOURCE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 31649-0004
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.
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Serial Number 76/125773
Since the prior filed applications are now abandoned, based on Office records, this file is removed from suspension for further action.
Registration no. 1,879,555, originally cited against the applicant’s mark,. is cancelled under the provisions of Section 8 and is therefore no longer a bar to registration of the applicant;s mark.
The requirement for a specific complete and accurate identification of goods is now made FINAL for the reasons set forth below. TMEP sections 1103.04 and 1105.02; 37 C.F.R. §2.64(a).
An identification of goods or services must clearly and precisely identify the nature of such activities or goods, identifying the potential users and channels of trade, if necessary.
The wording “computer programs used to aggregate and transmit customer data from multiple sources… ” 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 §1402.01.
It is suggested that the following language be used at the end of the current identification clause, to more completely identify the areas of use and type of users of the software:
…deisgned for banks and other financial institutions to handle banking, bill payment, other value transactions and information exchange for their banking customers via computer networks, in international class 9.
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).
PLEASE NOTE: All of the issues raised can be resolved by telephone. The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.
To reach the undersigned attorney by telephone after November 2, 2004, please call (571) 272 - 9354. Thank you.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
Henry S. Zak
/Henry S. Zak/
Examining Attorney
Law Office 108
(703)308-9108 x 149
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
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.