UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/149069

 

The applicant’s response to the second non-final Office action was filed on April 8, 2003. The examining attorney has reviewed the applicant’s amendments and arguments in favor of registration.  The Section 44(e) filing basis has been added, and the foreign registration has been entered into the record.  As to the other outstanding issues, the examining attorney has determined as follows in this third non-final Office action.

OWNERSHIP OF PRIOR REGISTRATIONS

 

It appears that two applications owned by the applicant were registered subsequent to the applicant’s filing of this application and during the prosecution of the same.  Prior registrations of the same or similar marks owned by the applicant should be identified in the application.  37 CFR §2.36.  If the applicant is the owner of Registration Nos. 2601675 and 2430759, the applicant must claim said registrations.  The applicant must also claim ownership of Registration No. 2396872, if accurate. 

 

 

 

REQUIREMENT FOR ACCEPTABLE SPECIMEN OF USE MAINTAINED

 

The examining attorney notes that the applicant’s response indicates the following at page 3:

 

“In the Office Action, the Examining Attorney has rejected the specimen of use filed by Applicant as displaying a mark that is a material alteration from the mark shown on the drawing page.  In response, Applicant states that it has amended the application to delete Section 1(b) as a filing basis, thereby obviating this requirement.”

 

The applicant is advised that the application was filed under Section 1(a); not Section 1(b).  Consequently, there is no Section 1(b) basis to be deleted.  Specimens of use are a requirement of Section 1(a).   

 

In the second non-final Office action, the examining attorney indicated the following:

 

UNACCEPTABLE SPECIMEN OF USE

 

In the first Office action, the examining attorney indicated that the applicant must submit one specimen of use per class, showing how the applicant actually uses the mark in commerce.  The examining attorney further indicated that, if the specimen was not filed with the initial application, the applicant must submit a declaration under 37 C.F.R. Sections 2.20 and 2.33. or affidavit stating that the specimens were in use in commerce at least as early as the application filing date.

 

In its response, the applicant has submitted a verified specimen consisting of “the introduction section from a lengthy installation and user manual for Applicant’s security systems.”  According to the applicant, “the mark appears on page four of the introduction where MONITOR ISM ENTERPRISE is described as a particular option for the family of MONITOR ISM systems.” 

 

The examining attorney has carefully reviewed the applicant’s submitted specimen of use.  The applicant is advised that the drawing displays the mark as “MONITOR ISM ENTERPRISE.”   However, this differs from the display of the mark on the specimen, where it appears as “ENTERPRISE VERSION” and “PRIME AND/OR ENTERPRISE SOFTWARE.” 

 

The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.

 

Because the applicant has neither submitted an acceptable specimen of use nor amended the application to delete the Section 1(a) basis, the foregoing requirement for an acceptable specimen of use is MAINTAINED.

 

REQUIREMENT FOR AMENDED IDENTIFICATION OF GOODS MAINTAINED

 

REQUIREMENT FOR AMENDED IDENTIFICATION OF GOODS

 

The applicant has requested that its identification be amended to:

 

“Computer controlled surveillance systems comprising computer based configuration and surveillance station or stations and security controllers with related security surveillance field hardware, for use in providing fire, gas and anti-intrusion alarm surveillance, control of building lighting, central alarm surveillance and access to security systems records in International Class 9.”  The wording “computer based configuration and surveillance station or stations and security controllers with related security surveillance field hardware” in the identification of goods remains unacceptable as indefinite.  TMEP section 804.  Consequently, the requirement for an amended identification of goods is CONTINUED.

 

In its response to the second non-final Office action, the applicant has stated that the previously-submitted identification should be accepted because it clearly defines the applicant’s goods.  The examining attorney respectfully disagrees.

 

The applicant is advised that the identification of goods or services should set forth common names, using terminology that is generally understood.  For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the item.  Technical or esoteric language is not appropriate.  See TMEP section 1402.01.  The language used to describe goods or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field.  An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.  The identification of goods or services must be specific, definite, clear, accurate and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

As specifically indicated in the second non-final Office action, the wording “computer based configuration and surveillance station or stations and security controllers with related security surveillance field hardware” in the applicant’s proposed identification remains unacceptable as indefinite.  TMEP section 1402.01.  It appears that the applicant is attempting to conform its identification to the identification of goods in Registration No. 2430759, registered on February 27, 2001, and Registration No. 2601675, registered on July 30, 2002.  The applicant is respectfully advised that the examining attorney is not bound by the decisions of other examiners in allowing other identifications.  Consequently, the requirement for an amended identification of goods is MAINTAINED.

 

To follow is the examining attorney’s suggestion concerning the applicant’s identification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestion, if accurate:

 

“Computer controlled surveillance systems comprising computer-based configuration and surveillance base stations, electrical security controllers and related security surveillance computer hardware for use in providing fire, gas, anti-intrusion alarm and central alarm surveillance, controlling building lighting, and granting access to security systems records” in International Class 9.” 

If the applicant has access to the world wide web, it is strongly recommended that it review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.  For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

The applicant is reminded that, while an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

 

LIKELIHOOD OF CONFUSION REFUSAL MAINTAINED

 

In the first Office action, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1910703 as to be likely to cause  confusion, or to cause mistake, or to deceive.  TMEP section 1207.  A copy of the referenced registration was made of record in conjunction with the first Office action mailed on May 1, 2001. The examining attorney has carefully reviewed the applicant’s arguments concerning the Likelihood of Confusion Refusal, but has found them unpersuasive.  For the reasons made of record in the first Office action, the Likelihood of Confusion Refusal is MAINTAINED.

 

FEE INCREASE EFFECTIVE JANUARY 1, 2003 (FOR INFORMATION ONLY)

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.  Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

CHANGE OF ADDRESS FOR MAILING TRADEMARK CORRESPONDENCE (FOR INFORMATION ONLY)

 

To expedite processing, the Office encourages parties to file documents through the Trademark Electronic Application System, at http://www.gov.uspto.report/teas/index.html, wherever possible. 

 

Effective May 1, 2003, the mailing addresses for filing trademark-related documents on paper has changed.  See notices at 68 FR 19371 (April 21, 2003) and 68 FR 14332 (March 25, 2003). 

 

All trademark-related correspondence filed by mail, except for documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:

 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, Virginia  22202-3514

 

The mail box designations previously listed in TMEP §305.01 are no longer in use.

 

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/.  Paper documents and cover sheets to be recorded in the Assignment Services Division should be sent to:

 

Mail Stop Assignment Recordation Services

Director of the United States Patent and Trademark Office

P. O. Box 1450

Alexandria VA  22313-1450

 

Copies of trademark documents can be ordered through the Office’s website at http://www.uspto.gov.  Requests for certified or uncertified copies of trademark documents filed on paper should be sent, with an authorization to charge the fee to a credit card or USPTO deposit account, to: 

 

Mail Stop Document Services

Director of the United States Patent and Trademark Office

P. O. Box 1450, Alexandria VA  22313-1450

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the undersigned examining attorney.

 

Sonya B. Stephens

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 227 (phone)

(703) 746-8108 (fax)

ecom108@uspto.gov

 

 

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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.