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  76/240790

 

This letter responds to the applicant’s communication filed on November 17, 2003.  The applicant has submitted an amended identification of goods and recitation of services that is unacceptable in part and is discussed below.  The foreign registration has been submitted and is accepted.  The applicant is advised as follows.

 

ACCEPTABLE IDENTIFICATION OF GOODS/SERVICES

 

Applicant’s amended identifications of goods and recitation of services in Classes 7 and 16 are accepted and entered in the record.  In the event the applicant fails to respond to this Final Office action within the six month time limit, only Classes 7 and 16 will proceed to publication.  All other classes of goods and services WILL ABANDON and be deleted from the record.

 

REQUIREMENT FOR AN ACCEPTABLE IDENTIFICATION OF GOODS AND RECITATION OF SERVICES – FINAL

 

The applicant must provide further clarification to the identification of goods and recitation of services.  The specific issues in each Class are addressed below.

 

INDENTIFICATION OF GOODS

 

Class 9:  The applicant must specify that the magnetic data carriers are blank in nature.  The term “system” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification by listing the major parts of the system and describing the nature and use of the system.  TMEP §1402.03(a).

 

 The following identification should be adopted if accurate:  BLANK MAGNETIC DATA  CARRIERS;  RECORDING  DISCS CONTAINING INFORMATION REGARDING THE FIELDS OF AVIATION, DEFENSE, MISSILES, SPACE TRAVEL AND SATELLITES;  APPARATUS,  NAMELY  TELEPHONES, RADIOS, RADIO TRANSMITTERS AND  RECEIVERS, RADAR APPARATUS, COMPRISED OF [SPECIFY COMPONENTS] FOR RECORDING, TRANSMISSION AND REPRODUCTION OF SOUND OR IMAGES; DATA PROCESSORS AND COMPUTERS; FIRE-EXTINGUISHERS; COMPUTER SOFTWARE NAMELY FOR USE IN THE GUIDANCE, DIRECTION AND CONTROL OF AIRCRAFT, MISSILES,  SATELLITES AND  SPACE CRAFT  AND COMPUTER HARDWARE; ELECTRONIC APPARATUS AND INSTRUMENTS [SPECIFY NATURE OF APPARATUS AND INSTRUMENTS], NAMELY SATELLITE GUIDANCE AND CONTROL SYSTEMS COMPRISED OF [SPECIFY COMPONENTS]; PRE-RECORDED DISCS AND TAPES FEATURING INFORMATION REGARDING THE FIELDS OF AVIATION, DEFENSE, MISSILES, SPACE TRAVEL AND SATELLITES; BLANK NON-RECORDED COMPACT AND VIDEO DISCS AND TAPES; TRANSMITTERS, NAMELY RADIOS AND TELEPHONES; TELEPHONE RECEIVERS AND RADIO RECEIVERS; SCIENTIFIC SATELLITES AND SATELLITES   FOR RECEIVING AND  TRANSMITTING RADIO SIGNALS; ELECTRICAL CABLES, FIBRE OPTIC CABLES; AUTOMATIC ELECTRICAL DIRECT THRUST CONTROLLERS; SATELLITE PROCESSORS; DOWNLOADABLE ELECTRONIC PUBLICATIONS   IN THE  FORM  OF  INSTRUCTION MANUALS AND PAMPHLETS AND NEWSLETTERS IN THE FIELDS OF AVIATION, DEFENSE, MISSILES, SPACE TRAVEL AND SATELLITES; AUTOMATIC THRUST CONTROLLERS; SATELLITES; STRUCTURAL PARTS FOR ALL THE AFOREGOING; ELECTRONIC APPARATUS AND INSTRUMENTS  [SPECIFY NATURE OF APPARATUS AND INSTRUMENTS] AND  COMPUTER  HARDWARE  AND SOFTWARE FOR USE IN RELATION TO THE LAUNCHING AND GUIDANCE OF MISSILES;

 

Class 12:   The applicant has identified goods in Class 12 that are properly classified in Class 13.  Specifically, tanks, rocket and missile launchers must be reclassified in Class 13.  The Class 13 identification has been modified to incorporate these goods. 

 

The following identification should be adopted if accurate:  VEHICLES FOR LOCOMOTION BY LAND, AIR, WATER AND RAIL, NAMELY ARMORED CARS, PASSENGER CARS, TRUCKS, VANS, BICYCLES, MOTORCYCLES, MOTOR BUSES,  MOTOR  COACHES,  LORRIES, AEROPLANES, HELICOPTERS, SHIPS, SEA AND WATER VESSELS, SUBMARINES,   FRIGATES,  HYDROPLANES,  FERRY BOATS,  BARGES, AMPHIBIOUS  VEHICLES; SPACE VEHICLES IN GENERAL; MILITARY VEHICLES FOR USE BY LAND, SEA, AIR AND IN SPACE, NAMELY, AIRCRAFT, HELICOPTERS AND SPACECRAFT IN GENERAL, ARMOURED CARS, PASSENGER  CARS, TRUCKS, VANS, BICYCLES,

MOTORCYCLES, MOTORBUSES, MOTORCOACHES, LORRIES, AEROPLANES, SHIPS, SEA AND WATER VESSELS,  SUBMARINES,  FRIGATES, HYDROPLANES, FERRY BOATS, BARGES AND AMPHIBIOUS VEHICLES; AND STRUCTURAL PARTS FOR ALL THE FOREGOING;

 

Class 13:  The Class 13 identification of goods has been modified to include tanks, rocket and missile launchers.  The applicant has identified goods in Class 13 that are properly classified in Class 9.  Specifically, the language “electronic apparatus and instruments and computer hardware and software for use in relation to the launching and guidance of missiles” appears to be in the nature of controls or computer goods that are the subject matter of Class 9.  Accordingly, this language has been incorporated in the Class 9 identification.

 

The following identification should be adopted if accurate:  WEAPONRY, NAMELY, TANKS, ROCKET AND MISSILE LAUNCHERS; FIREARMS, AMMUNITION AND   PROJECTILES; EXPLOSIVES; MISSILES; ROCKET MOTOR DRIVEN WEAPONS IN THE FORM OF MISSILES AND TORPEDOES; MISSILE LAUNCHERS; STRUCTURAL PARTS FOR ALL THE FOREGOING;

 

RECITATION OF SERVICES 

 

Consultation services are classified in the class where the subject matter addressed by the consultation services is classified.  Thus, consultation services concerning telecommunications is classified in Class 38 with the telecommunications services, while consultation services concerning transportation are classified in Class 39 with the transportation services.  Appropriate language for each consultation service has been suggested in the proper class.  Please see below.  In addition, there are requirements for additional language changes necessary for clarity and proper classification.

 

Class 37:   Construction services in Class 37 covers only the construction of structures.  All other construction is more appropriately a specialized manufacturing service that should be incorporated in Class 40.  Class 40 custom construction services must be for the order and specification of others, otherwise construction of applicant’s own goods is not a service, therefore no suggestion has been made concerning Class 40.

 

The following identification should be adopted if accurate:  CONSTRUCTION  AND REPAIR   SERVICES [SPECIFY FIELD OF CONSTRUCTION AND REPAIR SERVICES]; INSTALLATION, MAINTENANCE AND REPAIR OF ELECTRONIC APPARATUS, NAMELY  TELEPHONES, TELEPHONE AND RADIO TRANSMITTERS AND RECEIVERS,  MISSILE AND  SATELLITE GUIDANCE SYSTEMS AND ELECTRONIC APPARATUS USED IN RELATION TO MISSILE AND SATELLITE GUIDANCE; CONSTRUCTION AND REPAIR SERVICES IN THE FIELDS OF AVIATION FACILITIES, AND DEFENSE FACILITIES; REPAIR OF SATELLITES; PROVIDING INFORMATION IN THE FIELD OF CONSTRUCTION AND REPAIR OF ELECTRONIC GOODS, AIRCRAFT, DEFENSE SYSTEMS AND SATELLITES; INSTALLATION AND MAINTENANCE OF COMPUTER HARDWARE; CONSULTING AND ADVISORY SERVICES IN THE FIELD OF REPAIR OF ELECTRONIC GOODS, AIRCRAFT, DEFENSE SYSTEMS AND SATELLITES;

 

Class 38:   The applicant has specified services in Class 38 that are properly classified in Class 41.  Specifically, the electronic provision of news, regardless of methodology is a Class 41 service.  Accordingly, the Class 41 service has been modified to include this service.

 

The following identification should be adopted if accurate:  TELECOMMUNICATION SERVICES, NAMELY PAGING AND   MOBILE   PHONE   SERVICES,   SATELLITE TRANSMISSION AND SATELLITE COMMUNICATION SERVICES, RADIO COMMUNICATION SERVICES; THE PROVISION  OF TELEPHONY  COMMUNICATION

SERVICES;  RENTAL  OF TELECOMMUNICATIONS  APPARATUS; RENTAL OF APPARATUS FOR TRANSMITTING MESSAGES; RENTAL OF MODEMS;   COMMUNICATION   BY   COMPUTER TERMINALS;  TRANSMISSION  OF  MESSAGES AND IMAGES BY MEANS OF COMPUTERS; RADIO AND TELEVISION BROADCASTING SERVICES; MOBILE PHONE SERVICES; PROVIDING INFORMATION RELATING TO

THE FOREGOING;  PROVIDING MULTIPLE USER ACCESS TIME TO COMPUTER DATABASES; CONSULTING AND ADVISORY SERVICES RELATING TO TELECOMMUNICATION SERVICES IN THE NATURE OF PAGING AND MOBILE PHONE SERVICES, SATELLITE   TRANSMISSION AND  COMMUNICATION SERVICES, RADIO COMMUNICATION SERVICES, THE PROVISION   OF    TELEPHONY   COMMUNICATION SERVICES,   THE TRANSMISSION  OF NEWS AND INFORMATION VIA COMPUTER TERMINALS, RENTAL OF TELECOMMUNICATIONS APPARATUS, RENTAL OF APPARATUS FOR TRANSMITTING MESSAGES, RENTAL OF MODEMS, COMMUNICATION   BY  COMPUTER TERMINALS, TRANSMISSION OF MESSAGES AND IMAGES BY MEANS OF COMPUTERS, RADIO AND TELEVISION BROADCASTING SERVICES AND MOBILE PHONE SERVICES;

 

Class 39: 

 

The following identification should be adopted if accurate:  FREIGHT TRANSPORTATION SERVICES BY TRUCK, RAIL, SHIP AND AIRCRAFT AND STORAGE SERVICES; AIR TRANSPORT;  RENTAL OF   AIRCRAFT; PROVIDING INFORMATION  RELATING TO THE  FOREGOING; CONSULTATION AND ADVISORY SERVICES RELATING TO FREIGHT TRANSPORTATION SERVICES BY MEANS OF LAND, SEA, AIR AND RAIL AND STORAGE SERVICES, AIR TRANSPORT AND RENTAL OF AIRCRAFT;

 

Class 41:   Class 41 has been modified to include news services.

 

The following identification should be adopted if accurate:  EDUCATIONAL SERVICES NAMELY CONFERENCES, LECTURES AND SEMINARS IN THE FIELDS OF AVIATION, DEFENSE, MISSILES, SPACE TRAVEL AND SATELLITES; ORGANIZATION OF CONFERENCES, LECTURES AND SEMINARS RELATING TO THE FIELDS OF AVIATION, DEFENSE, MISSILES, SPACE TRAVEL AND SATELLITES; PUBLICATION OF BOOKS, PERIODICALS AND OTHER PUBLICATIONS; PUBLISHING SERVICES; PROVIDING INFORMATION   RELATING TO  THE    FOREGOING; CONSULTATION AND ADVISORY SERVICES RELATING TO EDUCATIONAL SERVICES NAMELY CONFERENCES, LECTURES AND SEMINARS IN THE FIELDS OF AVIATION, DEFENSE, MISSILES, SPACE TRAVEL AND SATELLITES; PROVISION OF NEWS ALL RELATING TO AVIATION, SPACE TRAVEL AND DEFENSE VIA SATELLITE, TELEPHONE, RADIO AND E-MAIL; VIDEO TAPE FILM PRODUCTION;

 

Class 42:     Applicant has proposed “installation of computer hardware” in Class 42, as well as “maintenance of computers.”  These services are properly classified in Class 37.  Class 37 has been modified to include this language.  “Recording and filming video tapes” is indefinite.  Language covering this service has been suggested in Class 41.  Providing access time to computer databases in properly classified in Class 38 and Class 38 has been amended to include this language.

 

TESTING OF COMPUTER HARDWARE; TESTING AND INSTALLATION  OF SOFTWARE;  RECORDING  AND FILMING OF VIDEO TAPES; DATABASE DEVELOPMENT FOR OTHERS; TECHNICAL CONSULTING SERVICES ON SECURITY  MATTERS; TESTING OF MATERIALS; PROVIDING METEOROLOGICAL INFORMATION; DRAFTING AND DESIGN OF SOFTWARE FOR OTHERS; DRAFTING AND DESIGN OF COMPUTER IMAGES OF OTHERS; SURVEYING ENGINEERING WORKS; MAINTENANCE OF SOFTWARE FOR OTHERS; TECHNICAL RESEARCH AND MECHANICAL RESEARCH IN THE FIELD OF AERONAUTICAL ENGINEERING; COMPUTER PROGRAMMING FOR OTHERS; CONDUCTING TECHNICAL PROJECT STUDIES; COMPUTER-AIDED DESIGN SERVICES IN THE FIELDS OF AVIATION, DEFENSE, MISSILES,  SPACE TRAVEL AND SATELLITES, IN THE FORM OF THE DESIGN OF AIRCRAFT, SPACE CRAFT, MISSILES, TANKS AND MILITARY VEHICLES BY COMPUTER; ENGINEERING SERVICES RELATING TO THE DESIGN OF DIGITAL RADIO COMMUNICATION  NETWORKS;  ENGINEERING AND TECHNICAL CONSULTING SERVICES RELATING TO MISSILES AND MISSILE GUIDANCE AND LAUNCHING SYSTEMS AND APPARATUS; DESIGN OF TELECOMMUNICATION AND

BROADCASTING PROGRAMS; TECHNICAL CONSULTING IN   THE    FIELDS  OF   TELECOMMUNICATIONS, INFORMATION TECHNOLOGY AND COMPUTERS; INFORMATION, CONSULTING AND ADVISORY SERVICES, ALL RELATING TO THE FOREGOING; CONSULTING AND ADVISORY SERVICES IN THE FIELDS OF DESIGN OF  ELECTRONIC GOODS, AIRCRAFT, DEFENSE SYSTEMS AND SATELLITES.

 

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing 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.

 

PROPER RESPONSE TO FINAL ACTION

 

If applicant fails to respond within six months of the mailing date of this final action, then the goods and services to which the final refusal and/or requirement applies will be deleted from the application.  The application will proceed forward for the remaining classes of goods and/or services only.  37 C.F.R. §2.65(a).

 

 

 

 

 

 

 

 

 

/Brian Neville/

Trademark Examining Attorney

Law Office 114

(703) 308-9114 ext.143

 

 

 

 

 

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.