UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/165367
APPLICANT: Peer 1 Networks Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PEER 1
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CORRESPONDENT’S REFERENCE/DOCKET NO: 12362.109892
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 76/165367
The application has been removed from suspension because the foreign registration information has been submitted. This application is based upon Sections 1(b) and 44(e). The following issue has been raised. In addition, the requirement for a disclaimer is continued and maintained as discussed below.
The identification of services is unacceptable because it exceeds the scope of the services identified in the foreign certificate of registration. Specifically, the foreign registration restricts the services to “all for the enhancement of the transmission (sending and receiving) of data and other electronic signals and communications of others, and for enhancing access to the websites of others, via a global computer network.” The applicant must include this language in his recitation of services. In re Lowenbrau München, 175 USPQ 178 (TTAB 1972); 37 C.F.R. §2.32(a)(6); TMEP §§1012 and 1402.01(b). It may be placed at the end, as follows:
International class 38 - Telecommunication services namely, routing of electronic transmissions of others, Internet bandwidth connectivity, and providing of high speed, high performance Internet access, including long haul international multicast network for the transfer of data and other electronic signals and communications, all for the enhancement of the transmission (sending and receiving) of data and other electronic signals and communications of others, and for enhancing access to the websites of others, via a global computer network.
The applicant has been required to insert a disclaimer since the original Office Action dated May 7, 2001. Subsequent to that Office action, the disclaimer requirement had been maintained for all international class 38 services. Further, in light of the evidence of record and the applicant’s foreign registration, which makes clear the purpose of the services, the disclaimer requirement is continued and maintained for the entire international class 38 services. “Peer” merely describes anything network related. The applicant’s foreign registration makes no doubt that his services are all for the “enhancement” of transmissions and access to networks. Applicant's website touts this feature and purpose of the services, wherein he refers to his many “peering” relationships for the purpose of network enhancement. As such, the requirement for a disclaimer of “Peer” apart from the mark as shown applies to all the services recited in international class 38.
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number. No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
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.
/Gene V.J. Maciol/
Gene V.J. Maciol
Trademark Attorney Advisor
Law Office 103
571 272 9280
571 273 9280 fax
HOW TO RESPOND TO THIS OFFICE ACTION:
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
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.