Offc Action Outgoing

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  76/316583

 

This application has been reassigned to Examining Attorney Paula Mahoney.

 

This letter responds to the applicant's Request for Reconsideration filed on December 10, 2002.  The applicant amended the identification of goods and services in Classes 7, 9 and 35.  Because it is unclear if the prior examiners provided proper guidance to the applicant, the request for reconsideration is accepted, pending an acceptable amendment to the identification of goods and services.  The Examining Attorney spoke with the applicant’s attorney on July 8, 2003, wherein she requested an Office Action be sent due to the complexity of the identification issues.  This Office Action addresses only those issues which remain outstanding.  All other identification and classification of goods and services in previously Office Actions are incorporated by reference. 

 

 Identification of Goods/Services

The identification of goods and services are unacceptable as indefinite for Class 7, 9 and 35.  The applicant is advised as follows:

 

The applicant should clarify if the term CODEX in Class 7 is correct, or should appear as CODES. 

 

The wording “performing electronic printing methods, namely digital printing” appears to be a services because it is separated by colons form the preceding wording.  If it is a service, it is properly classified in Class 40. 

 

The phrase “electronic publications, namely books, magazines, manuals, patent documents, featuring protection rights relevant to data recorded on computer media” must be downloadable or recorded on media to be in Class 9.  

 

The Class 35 services also need clarification.  “Services of a programmer and database programming for the purpose of creating functional interfaces adopted to the user” in unclear.  The applicant must specify the services, i.e., “computer programming for others” in Class 42.

 

“Services of a programmer and database programming for the creation of surfaces for personal and value documents” is not acceptable.  The applicant must specify the services, i.e., “computer programming for others” in Class 42.

 

“Development, production, securing and administration of digital data for target-oriented information logistics, particularly for media paper, CD-ROMs, Internet, Intranet, Extranet for things such as printed patent documents” is not acceptable.  It appears the applicant may be offering services similar to the following:

 

            “Electronic storage of files and documents” in Class 39; and/or

 

            “Media duplication of data and digital information” in Class 40.

  

TMEP section 804.

 

Classification of Goods/Services

If the applicant adopts the suggested amendment to the identification of goods and services, the applicant must amend the classification to International Classes 7, 9, 16, 35, 38, 39, 40 and/or 42  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.

 

Response Guidelines

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

 

PLEASE NOTE:  The issues raised can be resolved by telephone.  The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

 

 

/Paula Mahoney/

paula.mahoney@uspto.gov

Trademark Attorney

Law Office 113

703-308-9113 x 279

Fax:  703-746-8113

 

 

 

 

Fee increase effective January 1, 2003

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.

 

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.