UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/414745
APPLICANT: Lawson Software, Inc.
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CORRESPONDENT ADDRESS: BRIAN D. ANDERSON OBLON SPIVAK MCCLELLAND MAIER ET AL 1940 DUKE ST ALEXANDRIA VA 22314-3451
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom114@uspto.gov
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MARK: UPGRADE WHILE ACTIVE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 223337US-13
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 76/414745 UPGRADE WHILE ACTIVE
Please note: The Office has reassigned this application to the undersigned examining attorney.
This letter responds to the applicant’s communication filed on October 28, 2003. The examining attorney has reviewed the response and withdraws the specimen requirement, however, the applicant must still address the following issues.
I. FINAL REQUIREMENT – Identification of Goods:
As discussed previously, the identification of goods as amended (to services) is still unacceptable as indefinite because it exceeds the scope of the goods as filed. As such, it must be deleted in its entirety and identification reverted back to the identification as filed (or within the scope of the Class 9 software as filed). TMEP §§1402.01 and 1402.03(a). Please note again 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 or services that are not within the scope of the goods and services recited in the present identification.
As such, this requirement is hereby maintained and made FINAL.
Accordingly, applicant may adopt the following identification (as originally filed), if accurate:
- Downloadable software with business applications for use in the areas of accounting, human resources, product distribution, outsourcing and retailing, and computer programs with business applications for use in the areas of accounting, human resources, product distribution and retailing, and instruction manuals sold as a unit therewith, in International Class 9.
II. FINAL REQUIREMENT – Classification of Goods:
If the applicant adopts the suggested amendment to the identification of goods, the applicant must amend the classification to International Class 9 (as originally filed). 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
As such, this requirement is hereby maintained and made FINAL.
III. CONCLUSION:
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 and TMEP Chapter 1700. 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).
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
Please note: All of the issues raised can be resolved by telephone. The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.
/KSC/
Karanendra S. Chhina
Trademark Attorney
Law Office 114
(703) 308-9114 x441
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.