UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/215760
APPLICANT: MYOB Technology Pty Ltd.
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CORRESPONDENT ADDRESS: ELIZABETH A. WALKER TESTA HURWITZ THIBEAULT HIGH STREET TOWER 125 HIGH ST STE 2200 BOSTON MA 02110-2725 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: MYOB
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/215760
This letter responds to the applicant’s communication filed on March 18, 2004.
The certified copy of Australia Registration Number 865,577 has been entered in the record.
The examining attorney acknowledges that applicant is the owner of Registration Numbers 1, 962,711, 2,350,203 and 2,352,074.
Upon further consideration, the recitation of services is somewhat indefinite and need clarification.
International Class 36
The wording “purchase payment” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “purchase payment processing services,” if accurate. TMEP §1402.11.
If the above suggestion is not accurate, applicant must amend the wording “purchase payment” to specify the activities involve in such services.
The wording “electronic accounts payable financing services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “electronic account payable services,” if accurate. TMEP §1402.11.
International Class 42
Applicant must amend its application service provider (ASP) to specify the function of such services. The wording “accounting, finance, bill payment and data management” indicates field of such services, it does not tell the function of such services.
The wording “promoting the goods and services of others by providing hypertext links to the web sites of others” in the identification of services is beyond the scope of the services listed in the foreign registration certificate and, therefore, must be deleted from the U.S. application. The goods or services identified in an application under Trademark Act Section 44, 15 U.S.C. §1126, may not exceed the scope of those appearing in the foreign application or registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012 and 1402.01(b).
And even if within the scope of the foreign registration, the applicant has classified promoting the goods and services of others by providing hypertext links to the web sites of others in International Class 42. The correct classification is International Class 35.
The applicant must rewrite the recitation of services in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).
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 services that are not within the scope of the services recited in the present identification.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Amos T. Matthews/
Examining Attorney
Law Office 108
(703) 308-9108 ext. 293
(703) 746-8108 (fax)
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.