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  76/371651

 

This letter responds to the applicant’s communication filed on December 16, 2002. The divisional request has been completed. However, the amendment to the identification of services in Class 42 is not acceptable for the following reasons.

 

The wording “Services in retail and wholesale sale of residential and commercial security systems consisting of closed circuit television, burglar and fire alarms and access control systems” in the recitation of services is unacceptable because of the use of the term “sale.”.  TMEP §1402.11.

 

The prohibition against the use of the term “sales” is not new. “Sales” is not acceptable because it is not considered a service that is rendered for the benefit of others. The only beneficiary of the actual sale is the proprietor of the store or the owner of the goods since, presumably, the owner of proprietor makes a profit from that commercial transaction. Accordingly, it is suggested that the applicant delete that term from the recitation of services.  See TMEP 1301.

 

To be a service, an activity must be for the benefit of someone other than the applicant.  For example, while an advertising agency provides a service when it promotes the goods or services of its clients, a company which promotes the sale of its own goods or services is doing so for its own benefit and is not rendering a service for others.  In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970).  Similarly, a company which sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.  In In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983), it was held that the claimed activity of syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, there being no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization following which the partnership intended to perform certain services.  But see In re Venture Lending Associates, 226 USPQ 285, 286 (TTAB 1985) (applicant's investment of funds of institutional investors and providing capital for management found to be "clearly an activity which benefits others within the meaning of the statute").

 

Accordingly, the applicant may amend to the following if accurate; “ computerized on-line retail store services and wholesale ordering services featuring residential and commercial security systems consisting of closed circuit television, burglar and fire alarms and access control systems.”

 

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

 

 

 

 

Lesley LaMothe

Trademark Attorney

Law Office 103

703-308-9103 ext 487

e-mail- lesley.lamothe@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.