Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing  date, this case will be given priority handling.  TMEP §708.01.

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

OFFICE RECORDS SEARCH:  The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number  76/180162

 

On July 21, 2004 , action on this application was suspended pending the disposition of Application Serial No. 76-129298.  Applicant is advised that the referenced pending application has abandoned and is no longer a bar to the registration of applicant’s mark.

 

Outstanding Informalities:

 

Recitation of Services:

 

The subject matter of “ONLINE SERVICES, COMMUNICATIONS, and INFORMATION TECHNOLOGY AND INFORMATION SERVICES” used to describe the services needs clarification because the wording is too broad and the services could go into various classes depending on the nature of the services provided.  

 

The applicant may adopt the following or use the Manual of Acceptable Identifications of Goods and Services for further suggestions: TMEP §1402.01.

 

PROVIDING ONLINE PUBLICATIONS, NAMELY, NEWSLETTERS, MAGAZINES, magazine supplements, COLUMNS, SECTIONS, JOURNALS, NEWSPAPERS AND BOOKS IN THE FIELDS OF COMPUTERS, COMPUTER SOFTWARE, ONLINE SERVICES, namely, (list the nature of the services), HIGH TECHNOLOGY, namely, (list the nature of the services), COMMUNICATIONS, namely, (list the nature of the services), and Computer INFORMATION TECHNOLOGY in class 41.

 

PROVIDING A WEBSITE OF INFORMATION IN THE FIELDS OF COMPUTERS, and COMPUTER SOFTWARE in class 42.

 

Recitation and Identification Amendment Advisory:

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(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.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

Disclaimer:

Applicant must correct the disclaimer to disclaim CTO in the application because it is who the services are geared towards.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

The following is the accepted standard format for a disclaimer:

No claim is made to the exclusive right to use “CTO” apart from the mark as shown.

 Chief Technical Officer www.promitheas.com/glossary.php

Applicant's Response

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  The applicant may also visit the Patent and Trademark Office’s home page at www.uspto.gov.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or electronic mail.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

Questions:

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Lourdes D. Ayala/

Examining Attorney

Law Office 106

(571) 272- 9316 x 225

Fax: (571) 273-9106

 

 

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

·            ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.

·            REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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