Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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  76/390500

 

This letter responds to the applicant's communication filed on March 21, 2003.

 

The  declaration is acceptable and has been entered into the record.

 

The identification of goods and services in International Classes 9, 16 and 39 is acceptable.

 

The applicant was required to submit an acceptable recitation of services.  That requirement is maintained and made FINAL.

 

International Class 35

The wording “advertising, marketing and promoting of financial services” in the recitation of services is unacceptable as indefinite because the method of the advertising, marketing and promotional services is unclear.  The applicant must amend the recitation to specify the common commercial name of the services.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.  TMEP §1402.11.

 

The wording “advertising services namely advertising of financial services via a global computer network” in the recitation of services is unacceptable as indefinite because the wording is unclear.  The applicant may amend this wording to “dissemination of advertising for others via the Internet in the field of financial services,” if accurate.  TMEP §1402.11.

 

The proposed amendment of the identification is unacceptable because the wording “product demonstrations at conferences and/or trade shows “ 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.

 

International Class 36

The proposed amendment of the identification is unacceptable because the wording “import/export services” 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.

 

If the applicant overcomes the above refusal, then the wording “import/export services” in the recitation of services is unacceptable as indefinite because the wording is unclear.  The applicant may amend this wording to “import and export agencies,” 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 35.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

Drawing Unacceptable

The applicant was required to submit an acceptable drawing.  That requirement is maintained and made FINAL.  The drawing is not acceptable because it is contains tape on its edges.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

For the foregoing reasons, this action is made FINAL.

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146; TMEP Chapter 1700 regarding petitions.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

/Esther Borsuk/

Examining Attorney

Law Office 112

Phone:  (703) 306-7913

Fax:  (703) 308-7184

ecom112@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.