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  76/429035

 

This letter responds to the communication filed on March 4, 2005.  Please note that all issues not discussed in this office action have been resolved.  This letter is a FINAL office action.

 

The application was originally refused because the applicant failed to properly identify its goods and/or services.  The applicant’s amended identification of goods and/or services is unacceptable.  Therefore, the requirement for an acceptable identification of goods and/or services is maintained and made FINAL.

 

Please note that the identification requirement is limited to those goods and/or services that appear in bold text; the goods and/or services that are not noted in bold text are acceptable.  If applicant should fail to respond to this Office action within the six month time limit, then the goods and/or services in bold text will be deleted from the application and the application will proceed only for the remaining goods and/or services.

 

 

 

 

Identification and Classification

The applicant’s amended identification of goods and/or services is unacceptable because it does not describe the goods with sufficient specificity.[1]

 

Class 9:

The nature of the signaling devices is not clear.  Moreover, the nature of the “analog and digital display units” is not clear as the wording could encompass circuit boards or computer monitors.  The applicant must also specify the type of transmitter.  The applicant also fails to specify the function of some of the software, as well of the nature of the goods to enable real-time engagement between users and content providers via the world wide web.

 

Class 35:

Acceptable.  However, the examining attorney moved services from another class to this class.

 

Class 38:

The nature of the world wide web services is not clear.  The same lack of specificity applies to the telex and facsimile services.  The nature of the digital transmission services is not clear.

 

Class 41:

The nature of the educational and training services is not described with sufficient specificity.  The same issue applies to the provision, production, development, composition, presentation, distribution and networking of online publications from databases on the world wide web and the provision, production, development, composition, presentation, distribution and networking of entertainment services online via a satellite communication or telecommunication network.  Upon further consideration, the nature of the electronic publishing services is not clear.  Moreover, the licensing services are properly classified in class thirty-five.

 

Class 42:

The leasing of access time to computers is no longer acceptable.

 

A written application must specify the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To “specify” means to name in an explicit manner.  The identification of goods or services should set forth common names, using terminology that is generally understood.  The language used to describe goods or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field.  An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.

 

The identification of goods or services must be specific, definite, clear, accurate, and concise.  See 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); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); 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). 

 

The identification should state common names for goods or services, be as complete and specific as possible and avoid indefinite words and phrases.  The terms “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “products,” “concepts,” “like services” and other indefinite terms and phrases are almost always unacceptable. 

 

The terms “namely” and “consisting of” are definite and are preferred whenever setting forth an identification that requires greater particularity.  Vague terminology should be replaced by “namely” and “consisting of” whenever possible.

 

However, the applicant may adopt the following identification, if accurate [underlining indicates additions]:

 

Satellites; satellite communication apparatus and instruments, namely, transmitters, transceivers, antennae, signaling devices in the nature of [list the common commercial name for the goods.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.], analog and digital display screens, computer terminals and keyboards; satellite communications terminals; communications apparatus and instruments, namely, {specify type of transmitters, e.g., radio, telephone} transmitters, transceivers, antennae, signaling devices in the nature of [list the common commercial name for the goods.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.], analog and digital display units in the nature of video monitors, computer terminals and keyboards, telephones, telex machines and facsimile machines; data processors and digital signal processors; computers; computer terminals, keyboards, and monitors; printers; antennae; telecommunication apparatus and instruments, namely, {specify type of transmitters, e.g., radio, telephone} transmitters, transceivers, antennae, signaling devices in the nature of [list the common commercial name for the goods.  If there is no common commercial name for the goods, then the applicant must describe the product and its intended uses.], analog and digital display units in the nature of video monitors, computer terminals and keyboards; computer software and computer peripherals for the provision and management of news, weather, sporting events and other information applications and access to the world wide web; mobile world wide web access equipment and apparatus, namely, {specify type of transmitters, e.g., radio, telephone} transmitters, transceivers, antenna, modems, routers, analog and digital display units in the nature of video monitors, computer terminals and keyboards, telephones and personal digital assistants; advanced satellite modems; computer hardware and software to enable real-time engagement between users and content providers via the world wide web; computer software for simulation and analysis of satellite communication systems; computer software for the operation and management of satellite communication systems in International Class 9;

 

Advertising for others and promoting the goods and services of others via an on-line communications network; rental of advertising space on the world wide web; compilation of information into computer databases, namely, computerized database management; providing information in the field of advertising; consultancy and advisory services relating to the licensing of telecommunication and satellite communications equipment in International Class 35;

 

Satellite communication services, namely, provision of television, telephone, telex, radio, facsimile and world wide web services via satellite; telecommunication services, namely, provision of telex, facsimile, and providing multiple user dial-up and dedicated access to the world wide web; electronic mail services; electronic transmission of data via satellite; telex and facsimile transmission services; leasing of telecommunications and satellite communications equipment; provision of telecommunications and satellite communications information, advisory services relating to telecommunications and satellite communications equipment and services; providing user access to the world wide web and other online systems; computer aided transmission of messages and images; digital transmission services, namely, information transmission services via digital networks; satellite transmission services; operation and maintenance of satellite communication and telecommunication networks; consultancy and advisory services relating to the operation and maintenance of telecommunication and satellite communication services in International Class 38;

 

Provision of educational and training services in the filed of telecommunications and satellite communications, namely, [list the common commercial name of the services, e.g., providing courses of instruction at the {indicate specific level, e.g. primary, secondary, college} level and training in the use and operation of satellites.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.]; provision, production, development, composition, presentation, distribution and networking of online publications from databases on the world wide web, namely, publishing of electronic publications; provision, production, development, composition, presentation, distribution and networking of entertainment services online via a satellite communication or telecommunication network, namely, [list the common commercial name of the services, e.g., production of {indicate specific type of activity, e.g. operas, television shows, plays}.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.]; conference services, namely, arranging and conducting educational conferences in International Class 41;

 

Design and development of systems, apparatus and instruments for the provision of satellite communication and telecommunication services; design and development of computer software, computer systems, computer infrastructures for the operation of satellite communication and telecommunication equipment and management of satellite communication and telecommunication services; design and development of computer software, computer systems, computer infrastructures, communications and broadcasting apparatus, instruments, systems and infrastructures, all for use in relation to news, weather, sporting events, business services and other information applications and world wide web applications including mobile world wide web access; design and development of interactive content management databases and user interfaces; design and development of computer software and infrastructures to integrate terrestrial networks; design and development of tracking and positioning equipment and services; reviewing standards and practices to assure compliance with laws and regulations in the fields of telecommunications and satellite communications; development of technical standards and procedures for the telecommunications and satellite communication industries; technical support services, namely, trouble shooting of satellite communication and telecommunication equipment problems; technical support services, namely, troubleshooting of satellite communication and telecommunication service problems; technical support services, namely, troubleshooting of computer software problems for information and internet applications; computer programming; rental of computer hardware, computer software and computer peripheral devices; updating and maintenance of computer software; creating and maintaining web sites; leasing computers; technical consultation services, namely, technical consultation relating to telecommunications and satellite communications; laboratory testing of satellite communications equipment for compliance with technical standards and certification thereof in International Class 42.

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or:

 

(1)     Applicant must list the goods and/or services by international class with the classes

listed in ascending numerical order.  TMEP § 1403.01; and

 

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Appropriate Responses

The applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing 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 applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

/Brian J. Pino/

Examining Attorney

Law Office 114

571.272.9209

571.273.9114 Law Office Facsimile

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.