UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/375495
APPLICANT: VODAFONE GROUP PLC
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CORRESPONDENT ADDRESS: BREWSTER TAYLOR LARSON & TAYLOR, PLC 1199 NORTH FAIRFAX STREET, STE 900 ALEXANDRIA, VIRGINIA 22314
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom110@uspto.gov
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MARK: VODAFONE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/375495
This letter responds to the applicant’s communication filed on 25 February 2003.
The amended identification of goods is unacceptable for the following reasons. The requirement for an acceptable identification of goods is REPEATED.
The wording “downloadable ringbones and graphics for mobile phones” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “downloadable ring tone recordings and downloadable software for use in graphics for mobile phones,” if accurate. TMEP §1402.01.
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 goods that are not within the scope of goods set forth in the present identification.
The wording “communication of data by radio, telecommunications and by satellite and providing such equipment on a temporary basis in the case of breakdown, loss or theft of the equipment” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “radio communication of data, telecommunication services, namely, personal communication of data, and satellite communication of data; leasing of satellite and telecommunication equipment in the case of breakdown, loss or theft of the equipment in Class 38; leasing of radios in the case of breakdown, loss or theft of the equipment in Class 41,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Classes 38 and 41. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
The wording “sale of personalized telephone numbers to customers” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “telecommunication services, namely assigning a particular telephone number to a particular customer in Class 38,” if accurate. TMEP §1402.11.
The wording “provision of directory services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “telephone directory information services in Class 35,” if accurate. TMEP §1402.11.
The wording “provision of location based services for telecommunications apparatus, namely a service which provides mobile phone users with directions to a particular location (restaurant, cinema etc.) via their mobile phones” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “satellite navigational systems, namely, a global positioning system via mobile phone in Class 9,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of goods, the applicant must amend the classification to International Class 9. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
The wording “communication services utilizing wireless application protocol technology which are secure in that the information transmitted cannot be intercepted by non-authorized parties” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “secure wireless digital messaging services,” if accurate. TMEP §1402.11.
The wording “communication services, namely, provision of telecommunications access to a corporate network and to personal information management systems including provision of access via mobile telephones” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “providing multiple-user access to corporate networks, personal in formation management system networks, including allowing access via mobile telephones,” if accurate. TMEP §1402.11.
The wording “providing customized display screens on telecommunications apparatus” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “custom design of display screens on telecommunication equipment for others in Class 42,” if accurate. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
With respect to Class 42, the amended recitation of services too broad because it could include services classified in other classes. The subject matter of the information provided determines the classification. Also, the wording “providing and leasing access time to computer databases” in the recitation of services is unacceptable as indefinite. Because content providers can build their own databases, the leasing of time to access those databases is ancillary to providing the database itself and is not considered a separate service. TMEP §1402.11.
The applicant may amend to the following, if accurate:
On-line business directories featuring information on telephone numbers and addresses, the ownership of telecommunications equipment, the availability of communications services, the security of dwelling and businesses and multimedia services in Class 35 [on-line listing, not on-line publication];
Providing finance-related information; and Consultation services in the field of telecommunications and the global computer information network in Class 38;
Electronic storage of information relating to telephone numbers and addresses, the ownership of telecommunications equipment, the availability of communications services, the security of dwellings and businesses, travel, entertainment, weather, sports events, news events, the global computer information network, finance, computing and multimedia services; and Providing travel information in Class 39;
Providing information on entertainment events and sports events in Class 41;
Providing information on the weather and news events; Providing specific information as requested by customers via the global computer network, telephone or electronic mail; Providing information at the request of end-users by means of telephone, global computer networks or electronic mail; News agencies, namely gathering and dissemination of news; Rental of computer hardware; Computer consultation services; Computer services, namely, designing and implementing network web pages for others; Computer programming and software design for others; Computer services, namely, providing search engines for obtaining data on a global computer information network in Class 42. TMEP §1402.11. If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Classes 35, 38, 39, 41 and 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
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.
Additional Class(es)
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
The requirement that the applicant state whether VODAFONE has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language is REPEATED. 37 C.F.R. §2.61(b).
As the certificate of foreign registration has not yet issued and therefore been submitted, the requirement for such certificate is REPEATED.
The claim of ownership of the applicant’s prior registration and the description of the mark statement are accepted and have been made of record.
/Katherine Stoides/
Examining Attorney
Law Office 110
(703) 308-9110 ext.166
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.