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  76/400795

 

I.         INTRODUCTION

 

            This Office Action responds to the applicant’s correspondence of September 23, 2003.  The examining attorney acknowledges and accepts the applicant’s amendment to correct the German registration number, and to add two classes of goods and services in International Classes 20 and 37, and these changes have been made of record.  Although the applicant in its response has made a number of helpful, clarifying amendments to the identification, there remain portions of the identification that are unacceptably indefinite.  Accordingly, the examining attorney herein continues and makes FINAL his refusal with respect to the identification.

 

II.        FINAL REFUSAL -- IDENTIFICATION OF GOODS AND SERVICES

 

            It is the applicant's responsibility to identify the goods and services as clearly, accurately and concisely as possible.  TMEP Section 1402.01(d).  See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).  Furthermore, the identification of goods and services must be specific and definite.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).  TMEP Section 1402.01.  To assist the applicant in this goal, the examining attorney herein offers the following language as an acceptable alternative.

 

In International Class 9;                 video tape recorders; DVD recorders; audio tape recorders; televisions; data processing equipment, namely, computer printer, computer software development tools, computer terminals, computer keyboard, computer cables, computer buffers, computer mouse, track boards, computer disk drives, computer monitors, computer joysticks, computer peripherals, data processors and data processing computers; computer software for use in database management and spreadsheet applications in the field of financial services; computer software for use in transportation management, planning, and execution, shipment optimization, processing, and booking, order entry and validation, payment of logistics services, supply chain management and execution, network engineering, visibility and monitoring, tracking and tracing shipments, product warehousing, distribution, picking and packaging, payment of invoices, service provider management, logistics network design and optimization, tender management, warehouse management, supply and demand processing, order processing and shipment execution.

 

In International Class 16;  paper boxes, envelopes, stamps, namely, postal stamps; blank and printed paper labels; writing paper; blank paper tapes and cards for the recording of computer programs and data; paper dividers for boxes; packaging materials, namely, paper mailing tubes, plain wrapping paper; paper bags for merchandise packaging; blank paper computer tapes; carrying cases made of paper; coasters made of paper; fiber paper, filler paper, packing paper; paper closures for sealing containers; paper containers; paper cartons for delivering goods; paper for wrapping and packaging; paper identification tags; paper labels; paper racks; paper tags; storage containers made of paper; cardboard boxes; cardboard cartons, cardboard containers, cardboard mailing tubes; cardboard dividers for boxes; carrying cases made of cardboard; cardboard cartons for delivering goods; printed matter in the form of pamphlets, non-advertising brochures, newspaper, booklets, informational flyers, magazines inserts, newsletters, journals and magazines, all in the fields of education, current events, transportation, geography, business, finance, insurance, commerce, industry, electronic technology and communications; printed instructional and teaching materials in the fields of packaging, addressing and delivery options for goods and correspondence; non-advertising brochures and manuals in the fields of data processing, education, current events, transportation, geography, business, finance, insurance, commerce, industry, electronic technology and communications; printed matter, namely, special handling forms, pricing lists, money order forms; maps; dictionaries; instruction sheets in the use of postal services; plastic bags for packaging; file trays, letter trays and paper trays.

 

In International Class 20;  plastic containers, namely, plastic boxes, trays and racks to ship and store goods.

 

In International Class 35;  advertising agencies; dissemination of advertising for others via the Internet; dissemination of advertising matter; electronic billboard advertising; direct mail advertising; business management and business consultancy; business administration, namely, administration of business payroll for others and providing business information regarding business transactions, orders, bills and invoices, transfer and description of goods, operation of business for others, business research; office functions, namely, secretarial services, shorthand services, receptionist services, photocopying services, dictation services; mail sorting, handling and receiving; invoice processing; accounts payable debiting services; accounting services, including general ledger maintenance; payroll preparation; serving as a human resources department for others; order fulfillment services; transportation logistics services, namely, planning and scheduling shipments for users of transportation services; business management and business organizational consultancy; employment agencies; temporary employment agency services; cost accounting, including establishing and/or assessing current cost baselines; profit analysis; professional business consultancy; personnel management consultancy; bookkeeping services; account auditing; business auditing; business process auditing; logistics management in the field of planning and scheduling shipments for users of transportation services; quality auditing; business investigations, including background checking on companies; business consultation; business market analysis, including internal and external analysis of companies; direct marketing advertising for others; providing business marketing information; business marketing consulting services; business appraisals; business planning; invoicing services; computerized accounting services, including cost allocation, invoice validation and auditing; franchising, namely, offering technical assistance in the establishment and/or operation of transport companies and carriers; computerized on-line ordering services in the field of postage and postal products; monitoring and tracking of package shipments; providing an on-line computer database featuring trade information in the fields of transport, stamps, direct marketing advertising, direct mail advertising, supply chain processes, transportation, warehousing, manufacturing, trade, export/import duties and financing.

 

In International Class 36;  electronic processing and transmission of bill payment data;  financial analysis and consultation; supply chain financing; financial exchange services; bill payment services; financing services; financial forecasting; financial management; financial planning; financial consultancy; customs brokerage for others; financial consulting and planning and financing services for inventory, service payments, trade with customers; fiscal assessments and evaluation; insurance agencies; insurance brokerage and brokerage in the field of financial instruments; consultancy services in the field of insurance and banking; financial statement preparation and analysis for businesses; integrated tracking and management of commercial transactions on a global computer network.

 

In International Class 37;  maintenance of vehicle fleets; maintenance of telecommunications equipment; maintenance of computer hardware.

 

In International Class 38;  electronic transmission of messages, images and data via the Internet;  online news analysis and features distribution; broadcasting programs via a global computer network; electronic transmission of data and documents via computer terminals; telecommunications services, namely, transmission of voice and data by means of telephone, telegraphic, cable, and satellite transmissions; delivery of messages by electronic transmission; electronic transmission of messages and data by means, including by means of a global computer network; electronic store-and-forward messaging; telecommunications consultation, namely, consultation in the fields of electronic transmission of messages and data; telecommunications gateway services; providing multi-user access to a global computer information network; Internet and online services, namely, the electronic transmission of messages and images; providing multiple user dial-up and dedicated access to the Internet.

 

In International Class 39;  freight transport by means of trucks, ships, planes, motor vehicles, buses, railway and foot; transport brokerage; packaging articles for transportation; storage of letters, parcels and packaging articles; storage of goods in warehouses, distribution centers and production facilities; providing storage information; rental of storehouse and warehouse space; providing transportation information; courier services; postal services, namely, parcel delivery, packaging articles for transportation, rental of mail boxes; freight ship transport.

 

In International Class 41;  education services, namely, conducting classes, seminars, conferences, workshops in the field of supply chain management, logistics, transportation, warehousing, trade rules and regulations and the distribution of course materials in connection therewith.

 

In International Class 42;  data collection and retrieval; computer programming; engineering; technical consultation in the field of engineering; technical support, namely, monitoring of network systems and providing back-up computer programs and facilities; technical support services, namely, troubleshooting of computer hardware and software problems; computerized database management; database development services; database implementation; maintenance of computer software, including computer databases; installation of computer software; data conversion of computer program data or information; computer services, namely creating indexes of information, sites and other resources available on computer networks; computer services, namely designing and implementing web sites for others; computer services, namely, data recovery services; updating of computer software; computer consultation; computer software consultation; design of computer software; computer project management services; computer systems analyses; renting and leasing of computer software; hosting the web sites of others on a computer server for a global computer network; computer services, namely, creating and maintaining web sites for others; hosting of digital content on the Internet; providing specific information as requested by customers via the Internet; integration of computer systems and networks.

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

            For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual can be found online at: http://www.uspto.gov/web/offices/tac/doc/gsmanual/.  It offers a searchable list of acceptable identifications and classifications, and although it is not an exhaustive list, it is nonetheless a very useful guide in formulating acceptable identifications. 

 

 

III.            CONCLUSION

 

            The examining attorney herein makes FINAL the refusal to register.  Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  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. Section 2.65(a).

 

            If the applicant has any questions regarding this Office action, please do not hesitate to telephone the assigned examining attorney.

 

 

 

 

 

/Nicholas K.D. Altree/

Trademark Attorney

Law Office 108

(703) 308-9108, ext. 132

Fax: (703) 746-8108

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.