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  76/388384

 

This letter responds to the applicant’s communication filed on December 23, 2002.

 

Amended Identifications of Goods and Services

 

International Class 40

The amended recitation of services in International Class 40 is acceptable and made of record.

 

International Class 16 – Amended Identification of Goods – Particular Wording Indefinite

The amended identification of goods is unacceptable as indefinite because the nature of the goods is not clear as presented.  Also, the amended identification lists goods in more than one international class.

 

The applicant must clarify the amended identification of goods by further defining paper and photograph machines.  Also, said wording is too broad because it could include items classified in other classes.  The applicant must amend the identification to list each item by its common commercial name.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

Further, “paper, photograph and book laminating machines” are classified in International Class 7.

 

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.

 

International Class 42 - Amended Recitation of Services – Indefinite

The amended recitation of services is unacceptable as indefinite because the nature of the services rendered is not clear as presented, particular wording is beyond the scope of the original recitation of services, and the amended recitation lists a service that is classified in an additional international class.  The applicant may adopt the following recitation, if accurate:

 

“Computer system design” should be amended to “Design of computers for others,” or  “Computer network design for others,” in International Class 42.

 

Also, the proposed amendment of the identification is unacceptable because the wording “providing access via the internet to undownloadable computer software” designates services that are not within the scope of the identification that was set forth in the application at the time of filing.  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 et seq. and 1402.07.

 

Further, “rental of computer memory and storage to others for purposes of website hosting and data storage” is classified in International Class 39.

 

TMEP §1402.11.

 

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.

 

Requirements for Combined Application

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.  (Emphasis added.) 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.  

 

Further action awaits response to the above.

 

 

 

 

/Mrs. W. K. H. Price, Esq./

Trademark Attorney

Law Office 111

(703) 308-9111, ext. 426

ecom111@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.