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  76/449858  BPM & Design

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

I.  NO CONFLICTING MARKS:

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.  However, the applicant must respond to the following informalities.

 

II.  RECITATION OF SERVICES:

 

The recitation of services is unacceptable as indefinite because it lacks sufficient specificity and because the ‘financial services’ could fall into additional classes.  TMEP §§1402.01 and 1402.03(a).  Accordingly, applicant may adopt the following identification, if accurate:

 

-         Financial services, namely, financial statement preparation and analysis for businesses, in International Class 35;  and

 

-         Banking services, financial services, namely, __________ (please specify, for example, analysis and consultation, research, planning, etc.), insurance brokerage services, monetary exchange services and real estate brokerage services, International Class 36.

 

PTO ONLINE SEARCHING MANUAL:

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at www.uspto.gov.

 

Please also 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 or services that are not within the scope of the goods and services recited in the present identification.

 

II.  CLASSIFICATION OF SERVICES:

 

If the applicant adopts the suggested amendment to the recitation of services, the applicant must amend the classification to International Classes 35 & 36.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

III.  ADDITIONAL CLASSES:

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the services in each class and list the services by international class with the classes listed in ascending numerical order (as listed above).  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of services not covered by the fee already paid.  The filing fee is $335 per class.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  The applicant has already paid for one class.

 

(3)  The applicant must submit: 

 

(a) USE:  dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application.  Please note, the specimen submitted with the application is acceptable for both Classes 35 & 36, however, the applicant must list the respective dates of first use for both classes; and/or (if applicable)

 

(b) INTENTION TO USE:  a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.  The following is a properly worded statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

           

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

DECLARATION:

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20 to support the requirements for this Section.  At the end of responses to the issues raised in this Section, the applicant should submit this declaration signed by a person properly authorized to sign on behalf of the applicant.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

            _____________________________

                            (Signature)

 

            _____________________________

             (Print or Type Name and Position)

 

            _____________________________

                                         (Date)

 

 

V.  CONCLUSION:

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

Karanendra S. Chhina

Trademark Attorney

Law Office 101

(703) 308-9101 x140

 

 

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.