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  76/321782

 

This letter responds to the applicant’s communication filed on March 27, 2003.  Therein, the applicant: 1) clarified its entity type and country of incorporation; 2) paid for an additional class of goods/services and 3) amended the identification of goods and services.  Numbers 1 and 2 are acceptable.

The applicant’s amendment to the recitation of services in International Class 38 is not acceptable, and for the reasons stated below, the requirements under TMEP Sections 804, 804.08(c) and 1301.05 are herein made FINAL.

RECITATION OF SERVICES IS UNACCEPTABLE AS INDEFINITE

As noted in the previous office action the terms “data and telecommunications networks, broadband telecommunications networks; data, information and telecommunications information systems, data communications” do not identify the common commercial name for any class 38 services.  The applicant failed to delete this language from the recitation or provide the common commercial name for these services.  The applicant states: “the acceptable of identification of services in Class 38 should allow for data and telecommunications networks and broadband telecommunications networks.  The examining attorney has indicated that these terms are not acceptable.  These are standard terms in the telecommunications industry.”  Response at 9.  While the terms may be standard in the industry they do not identify the common commercial name for any service.  A network is “a system of computers interconnected by telephone wires or other means in order to share information. Also called net.”[1]  A network is not a service, but rather a means of sharing information.  The language does not identify a class 38 service and must be deleted from the recitation. 

 

In addition, the terms “communication by computer terminal,” “wire services,” “electronic bulletin board services,” and  “teleconferencing services” are indefinite.   The applicant must specify the common commercial name for these services.  The applicant may adopt the following class 38 recitation if accurate.  Please note where additional information is required. 

 

Class 38:             Telecommunications services, namely, personal communication services, radio communication, cable television broadcasting, television broadcasting, radio broadcasting; multimedia messaging services, namely, wireless digital messaging services cellular telephone communication; communications by computer terminals, namely, electronic transmission of data and documents, communications by telegrams, communication by telephone, paging services, wire services, namely, telegram transmission and communication, transmission of telegrams, transmission of facsimiles; providing on-line electronic bulletin boards for transmission of messages among computer users concerning (indicate field or subject of bulletin board); computer based telecom services, namely, providing telecommunications connections to a global computer network; teleconferencing services (specify audio or video, e.g. audio teleconferencing services); telecommunications routing and junction services; electronic, electric and digital transmission of voice, data, images, signals, and messages; electronic transmission of messages; electronic mail services; electronic transmission of data and documents via computer terminals; leasing of telecommunications and radio communication systems and equipment; telecommunication services, namely, personal communication services and ISDN services; providing telecommunications connections to a global computer network; electronic store-and-forward messaging, namely, collecting and storing calls in a switchboard and in data communications and telecommunications networks; data packet transmission services; telecommunications services, namely providing fiber optic network services; satellite transmission; telecommunication information and consultation services related to telecommunications activities and data communication activities in connection with data packet transmission services; providing multiple-user access to a global computer information network

 

For the reasons stated above, this requirement is continued and made FINAL.

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.

 

The identification of goods and services in classes 9, 16, 35, 36, 37, 39, 41 and 42 is acceptable. 

APPLICANT’S OPTIONS

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of 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; TMEP Chapter 1700 regarding petitions.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

/Jennifer Martin/

Examining Attorney L.O. 116

(703) 306-7925; (703) 746-8116 (fax)

Jennifer.Martin@uspto.gov

 

Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to office actions. 

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.