UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/133034
APPLICANT: Deutsche Telekom AG
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CORRESPONDENT ADDRESS: JOAN L LONG MAYER BROWN ROWE & MAW LLP PO BOX 2828 CHICAGO IL 60690-2828
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: MAGENTA
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CORRESPONDENT’S REFERENCE/DOCKET NO: 03133309
CORRESPONDENT EMAIL ADDRESS:
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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 76/133034
This letter responds to the applicant’s communication filed on July 29, 2003.
The wording "apparatus for producing sound, images or data" in the identification of goods, as well as other wording in the identification, are unacceptable as indefinite because the nature of the goods is unclear.[1] Further, the wording "consultancy services …, namely, information and brokerage of insurances" in the recitation of services is unacceptable as indefinite. The requirements that applicant amend the identification of goods and recitation of services to be definite and within the scope of the application is MAINTAINED and made FINAL. Applicant may substitute the following wording, if accurate. TMEP §§ 1402.01 and 1402.11.
(1) Electric, electronic, optical, measuring, signaling, controlling or teaching apparatus and instruments, all for use with telecommunications, namely, apparatus for producing sound, images or data, namely, [state common commercial name of apparatus], blank magnetic and optical data carriers, data processors and computers, namely, microcomputers, minicomputers, computer central processors, computer monitors, computer keyboards, computer terminals, computer interface boards, computer memories, computer laser printers, computer impact printers, computer dot matrix printers, computer operating systems, computers and instructional manuals sold as a unit, computer interface apparatus, namely, computer modems, computer mouse and mouse pad, computer peripherals and parts thereof, computer programs and electronic databases recorded on computer media for use in operating telecommunications and business management systems and related instruction manuals sold as a unit, optical cables, optic filters, optical scanners, optical character readers, optical discs, optical fibers, optical glass for signal transmission, optic transmitters, optic receivers, optical signal processing apparatus, optic switches, optical networks comprising communication transmission switching and reception apparatus, optical attenuators, optical amplifiers, optical character recognition apparatus, and parts thereof; audio, video and data communications systems, namely, digital and analogue signal transmitters, receivers and converters, radio and telephone transmitters, receivers and servers, stationary, wireless and cellular telephone systems comprised of [state components of systems] and answering machines, telecommunication transmission, receiving and storage apparatus, namely, [state common commercial name of apparatus], telecommunications transmitting sets, data transmitters, facsimile machines, electronic mail apparatus for electronic exchange of data images and messages, remote controls and set-top units for [specify what remote controls and set-top units are used in connection with], cinematographic television and amusement equipment, namely, signal decoders and interactive audio and video equipment to facilitate interaction between consumers and providers of goods and services, namely, [specify common commercial name of interactive audio and video equipment]; electrical wire, electrical wire connectors, integrated circuits, printed circuits, electric circuits, circuit breakers, printed circuit boards, electric circuit boards, circuit connectors, electrical controllers, electrical converters, electrical fuses, electric luminescent display panels, electrical switch plates, electric plugs, antennas, electrical cables, computer cables, computer chips, silicon chips, chronographs for use as specialized time recording apparatus, electric coils, computer buffers, blank computer discs, blank computer floppy disks, computer hard discs, electrical conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts thereof; compact disc players, audio and video tape recorders, audio and video tape players, audio and video cassette recorders, audio and video cassette players, blank audio and video tapes, cassettes, discs and microfiche; audio and video tapes, cassettes, discs and microfiche featuring information concerning telecommunications and concerning personal and business management systems; video monitors, automatic vending machines and timing mechanisms therefor, and parts thereof, data processors and readers, word processors, magnetic coded card readers, magnetic coded cards, electronic encryption units, lasers not for medical use, light emitting diodes, light emitting diode displays, microprocessors, blank magnetic data carriers, demagnetizers for magnetic tapes, and parts thereof, communications and video transmission switching and reception apparatus, namely, [state common commercial name of apparatus]; computer, data and video networking and conferencing equipment, namely, teleconferencing equipment and audiovisual teaching equipment in the nature of [specify common commercial name of teleconferencing and audiovisual equipment], overhead film, photographic and slide projectors, projection screens, computer based information display equipment, namely, computers which display information on an overhead screen, intercoms; telephones, telephone answering machines, telephone transmitters, telephone networks, telephone wires, teleprinters, teletypewriters, and parts thereof; [delete: namely,] caller identification boxes; radio telephone equipment and accessories, namely, call boxes and systems comprised of [state components of systems], dialing assemblies, telephone units, audio operated relays, signaling devices, namely, [state common commercial name of signaling devices], receiving devices, namely, [state common commercial name of receiving devices], termination equipment, namely, [state common commercial name of termination equipment], audio/video signal and optical filters and protectors, and automatic signaling and control equipment, namely, [state common commercial name of signaling and control equipment], telemeters, wireless and cellular telephones, radio pagers, paging equipment, namely, [state common commercial name of paging equipment], portable computer devices, namely, [state common commercial name of portable computer devices], facsimile transmitters and receivers, wireless fax machines, personal communications equipment, namely, personal digital assistants (PDA), calculators and related peripherals; satellite processors, satellites and satellite communication earth stations both stationary and moveable; [delete: baseball batting helmets, which was inserted previously in an office action in error]; prerecorded compact discs, audio cassette tapes, video cassette tapes, digital audio tapes and digital video discs featuring musical, variety, news and comedy shows; and computer game programs for children and adults (International Class 9);
(2) Clearing of secure financial transactions through online services; financial and monetary services, namely financial analysis and consultation, financial information, issuance of securities, commercial lending services, financial portfolio management, discount brokerage services, brokerage of shares and business ventures, brokerage of fund shares, securities consulting and safe keeping, brokerage of productive investments and funds; real estate services, namely brokerage, management, leasing of real property, customs brokerage for third parties; consultancy services relating to insurance services, namely providing information on and brokerage of insurances; and monetary exchange (International Class 36).
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 or services that are not within the scope of the goods and services recited in the present identification.
Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700. If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
/ELIZABETH J. WINTER/
Trademark Examining Attorney
Law Office 113
(703) 308-9113 ext. 480; FAX (703) 746-6228
(703) 285-1184 (M, T, W, Th)
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 to this Office action electronically, the applicant must:
o include the serial number in the subject line;
o send the response to ecom113@uspto.gov. Responses sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
o submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only. NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
o respond within six-months from the Office action mailing date, or within the period stated in the Office action;
o respond in English; and
o sign the response electronically, e.g. /john smith/. See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.
If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.” Note: only one e-mail address may be used for correspondence. TMEP §804.07.
The examining attorney will send correspondence only to the e-mail address listed in the application. A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.
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.
[1] The Examining Attorney regrets any inconvenience caused to applicant because some of the suggestions were not set forth clearly in the prior office action; however, most referenced required changes were set forth in applicant’s numerous copending applications for the same goods.