UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

SECOND 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 76/415916

 

This letter responds to the applicant’s communication filed on December 13, 2002.

 

New Issues: 

 

Applicant’s Response Must Be Signed

 

If the applicant is not represented by an attorney, the response must be signed by someone with   legal authority to bind the applicant (e.g., an appropriate corporate officer or general partner of a   partnership).  A non-attorney who is authorized to verify facts on behalf of an applicant under  37 C.F.R. §2.33(a)(2) (see TMEP §804.04) is not entitled to sign responses to Office actions, or  to authorize examiner’s amendments and priority actions, unless he or she has legal authority to  bind the applicant.  TMEP § 712.01. 

 

Applicant must resubmit the amendment to the identification of goods, as well as the clarification that the drawing is intended to show the mark in TYPED format. 

 

When an application or response is filed through the Trademark Electronic Application System (TEAS), the applicant does not apply a conventional signature.  Instead, the applicant does the  following:

 

The applicant enters a “symbol” that the applicant has adopted as a signature.  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§1.4(d)(1)(iii) and 2.33(d).  Examples of acceptable signatures for TEAS applications include /john doe/, /drl/, and /544-4925/. 

TMEP § 804.05. 

 

Amended Drawing Includes a Material Alteration of the Mark

 

The amended drawing displays the mark as COVERAGESCOPE NPTE.  However, this differs from the display of the mark on the specimen, where it appears as COVERAGESCOPE.  The applicant cannot amend the drawing as proposed because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

 

Applicant should amend the application again with a revised drawing page showing the mark as follows: 

 

COVERAGESCOPE

Remaining Issue from first Office Action:

 

Identification of Goods

 

The wording “namely” in the identification of goods remains unacceptable as indefinite because it is inappropriate to use prior to the field of use.  The applicant may amend this wording to the following, if accurate.  TMEP §1402.01.  The requirement to amend the application to include definite wording is MAINTAINED. 

 

Computer software used to determine the efficiency of a test case applied to a software application by identifying what portions of the application code are actually executed during the given test case, namely, for use in the field of real-time software engineering (International Class 9). 

 

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.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 480; FAX (703) 746-6228

(703) 285-1184 (M, T, W, F)

 

 

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 to this Office action electronically, the applicant must:

 

o       include the serial number in the subject line;

o       send the response to ecom113@uspto.gov.  Responses sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;

o       submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);

o       respond within six-months from the Office action mailing date, or within the period stated in the Office action;

o       respond in English; and

o       sign the response electronically, e.g. /john smith/.  See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.

 

If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.”  Note: only one e-mail address may be used for correspondence.  TMEP §804.07. 

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

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.