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  76/359372

 

The applicant’s response to the first Office action was filed on October 24, 2002.  The examining attorney has reviewed the applicant’s amendments and arguments in favor of registration.  The substitute drawing page has been entered into the record.  Additionally, the citation of Registration No. 2058491 in the likelihood of confusion refusal has been withdrawn.  As to the other outstanding issues, the examining attorney has determined as follows in this second non-final Office action.

 

UNACCEPTABLE AMENDMENT TO IDENTIFICATION OF GOODS

 

The application lists the (acceptable) identification of goods, “computer software for use in retrieving, aggregating, parsing, and formatting data from public and private computer systems for the purpose of cleansing and standardizing the data or information obtained and converting the data or information into a format for use by others in making marketing, inventory and business decisions” in International Class 9.  However, in the response to the first Office action, the applicant has proposed the following amendment to the identification of goods, “COMPUTER SOFTWARE FOR USE IN PARSING AND FORMATTING DATA RELATED TO AUTOMOTIVE INVENTORY, SALES, SERVICE, PARTS, WARRANTY, CUSTOMER [SIC], FINANCE, AND INSURANCE INFORMATION COLLECTED FROM AUTOMOTIVE DEALERSHIPS” in International Class 9.

 

The applicant is advised that, while an application may be amended to clarify or limit the identification of goods, additions to the identification were not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant could not amend to include any goods not within the scope of the present identification.  The applicant should note that, under 37 C.F.R. §2.71(b), an applicant may clarify an identification of goods or services which is indefinite or overly broad, to identify goods or services which are within the scope of the goods and services in the identification.  The filing of an application for registration on the Principal Register establishes a constructive date of first use in commerce, contingent on issuance of the registration.  Trademark Act §7, 15 U.S.C. §1057.  Accordingly, the applicant may not expand those rights through amendment of the identification of goods and services. The scope of the goods and services identified initially, or as limited by an express amendment, establishes the outer limit for permissible amendments.  See TMEP section 1402.06. 

 

Because the applicant’s original identification contained the narrow wording “computer software for use in retrieving, aggregating, parsing, and formatting data from public and private computer systems for the purpose of cleansing and standardizing the data or information obtained and converting the data or information into a format for use by others in making marketing, inventory and business decisions,” the applicant may not now amend its identification to the broader wording “COMPUTER SOFTWARE FOR USE IN PARSING AND FORMATTING DATA RELATED TO AUTOMOTIVE INVENTORY, SALES, SERVICE, PARTS, WARRANTY, CUSTOMER [SIC], FINANCE, AND INSURANCE INFORMATION COLLECTED FROM AUTOMOTIVE DEALERSHIPS,” as said proposed amended wording exceeds the scope of the goods initially identified and is, therefore, unacceptable. 

 

To follow is the examining attorney’s suggestion concerning the applicant’s identification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestion, if accurate:

 

“Computer software for use in parsing and formatting data related to automotive inventory, sales, service, parts, warranties, customers, finance, and insurance information, namely insurance information from automotive dealerships, all collected from public and private computer systems for the purpose of cleansing and standardizing the data or information obtained and converting the data or information into a format for use by others in making marketing, inventory and business decisions” in International Class 9.

 

For more information on acceptable identifications and classifications of goods and services, the applicant should review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

The applicant is reminded that, while an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

 

LIKELIHOOD OF CONFUSION REFUSAL MAINTAINED

 

In the first Office action, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 0823124 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  A copy of the referenced registration was made of record in conjunction with the first Office action mailed on April 23, 2002. The examining attorney has carefully reviewed the applicant’s arguments concerning the likelihood of confusion refusal, but has found them unpersuasive.  For the reasons made of record in the first Office action, the likelihood of confusion refusal is MAINTAINED.

 

FEE INCREASE EFFECTIVE JANUARY 1, 2003 (FOR INFORMATION ONLY)

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.

 

CHANGE OF ADDRESS FOR MAILING TRADEMARK CORRESPONDENCE (FOR INFORMATION ONLY)

 

To expedite processing, the Office encourages parties to file documents through the Trademark Electronic Application System, at http://www.gov.uspto.report/teas/index.html, wherever possible. 

 

Effective May 1, 2003, the mailing addresses for filing trademark-related documents on paper has changed.  See notices at 68 FR 19371 (April 21, 2003) and 68 FR 14332 (March 25, 2003). 

 

All trademark-related correspondence filed by mail, except for documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:

 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, Virginia  22202-3514

 

The mail box designations previously listed in TMEP §305.01 are no longer in use.

 

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/.  Paper documents and cover sheets to be recorded in the Assignment Services Division should be sent to:

 

Mail Stop Assignment Recordation Services

Director of the United States Patent and Trademark Office

P. O. Box 1450

Alexandria VA  22313-1450

 

Copies of trademark documents can be ordered through the Office’s website at http://www.uspto.gov.  Requests for certified or uncertified copies of trademark documents filed on paper should be sent, with an authorization to charge the fee to a credit card or USPTO deposit account, to: 

 

Mail Stop Document Services

Director of the United States Patent and Trademark Office

P. O. Box 1450, Alexandria VA  22313-1450

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

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

 

Sonya B. Stephens

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 227 (phone)

(703) 746-8108 (fax)

ecom108@uspto.gov

 

 

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.