Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/337465

 

Applicant is requesting reconsideration of a final refusal dated February 16, 2005.  Applicant has amended its recitation of services in an attempt to overcome the section 2(d) refusal.  While the amendment does not overcome the section 2(d) refusal, it is indefinite and raises the following new issue.  The section 2(d) refusal is MAINTAINED. 

 

NEW ISSUE – RECITATION OF SERVICES 

 

In its October 26, 2004, response to the initial office action, the applicant provided the following amended recitation of services:  Advising business in strategic management, organizational effectiveness and project management; Providing project management services, namely predicting project outcomes and modifying project implementation to increase likelihood of success.  This recitation of services was accepted by the examining attorney and confirmed in the final action dated February 16, 2005. 

 

In attempt to obviate the outstanding section 2(d) refusal, the applicant has deleted the wording “Advising business in strategic management, organizational effectiveness and project management” from the recitation of services so it now reads as follows: Providing project management services, namely predicting project outcomes and modifying project implementation to increase likelihood of success.

 

While this amended recitation is an independent part of the prior identification, the amended recitation of services is unacceptable as indefinite. Absent the original deleted clause in the prior identification, it is unclear what type of project management services are provided and what field those services fall into.  The applicant may adopt the following recitation, if accurate:  Business management consultation, namely, providing project management services, namely predicting project outcomes and modifying project implementation to increase likelihood of success.  TMEP §1402.11.

 

To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the PTO website at http://www.uspto.gov under the heading Manuals and Publications on the Trademarks main page.

 

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.

 

SECTION 2(D) REFUSAL – MAINTAINED

 

In the prior office action dated February 16, 2005, the examining attorney issued a final 2(d) refusal as to the applicant’s mark, DICE, because it was confusingly similar to Reg. No. 2738243, also for the mark DICE, for highly similar if not identical and overlapping services.

 

Applicant has amended its recitation of services in an attempt to obviate the section 2(d) refusal, but in so doing it has left a broad, indefinite and open-ended recitation that still is highly related if not identical and/or overlapping with the registrant’s services.   Applicant provides further arguments which do not substantially differ from those previously advanced, differences in the respective services and existence of similar marks on the register.   The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.

 

Applicant further argues issues not of record in the registration or application, namely, that the applicant’s mark derives from a coined acronym and what the services consist of based on webpage evidence.  The examining attorney must consider the marks and services as presented in the registration and application and is unpersuaded by these arguments.

 

Accordingly, the section 2(d) refusal is MAINTAINED.

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

 

 

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.