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  76/387339

 

           The Office has reassigned this application to the undersigned examining attorney.

 

             This letter responds to the applicant’s communication filed on February 10, 2003.

 

              In the response, the applicant amended the recitation of services, added a class of services, declined to disclaim the wording CONNECTIVITY DASHBOARD and presented argument for registration.

 

             In the initial office action, the examining attorney refused registration based upon section 2(d) of the Trademark Act.  Said refusal is maintained. Please be advised that upon further review of the application herein, the requirement to disclaim the wording is withdrawn.

 

INFORMALITIES

 

              Before the application can be considered further, the following informal issues must be addressed.

 

INFORMATION REQUEST – SERVICES

 

          The nature of the service is not clear from the present record.  In order to allow proper identification and classification of the services on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services with which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

              Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

RECITATION OF SERVICES – CLASS 42

 

             The wording PROVISION OF AN ONLINE DATABASE IN THE FIELD OF ELECTRONICS AND COMPUTER PARTS AND EQUIPMENT in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “Class 000* - providing an on line computer database in the field of _________________ [specify the field of the information, please note that the field of the information determines the classification of the services; also, please note that you must specify the content of the database information for electronics, computer parts and equipment – these fields are vague – they don’t tell anything about the database, e.g. for purchasing said items, for consumer information about said items, etc.],” if accurate.  TMEP §1402.11.

 

              In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

             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.

 

             For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

REQUIREMENTS OF MULTI-CLASS APPLICATION

 

             The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.  37 C.F.R. §2.6(a)(1). 

 

             The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

CLOSING

 

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

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(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.