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  76/451370

 

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

 

NO CONFLICTING MARK FOUND

 

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. §1052(d).  TMEP §704.02.

 

DISCLAIMER REQUIRED

 

The applicant must disclaim the descriptive wording "EMPLOYEE" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.  The wording merely describes the subject matter of the applicant's software goods and services, namely, employee management and information. 

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use "EMPLOYEE" apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

IDENTIFICATION OF THE GOODS INDEFINITE

 

The wording "human resource" in the identification of the goods is unacceptable as indefinite.  The applicant must amend the identification to clarify the function/purpose of the software.  “Human resource software” by itself is too broad.  The other wording describing applicant’s software is acceptable (e.g., payroll processing software).    TMEP §1402.01. 

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

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.

 

CLASSIFICATION

 

The applicant has classified the services of “providing employee and personnel information . . .” incorrectly.  The applicant must amend the application to classify the services in International Class 35.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  Note that information regarding employee benefits and pension plans and employee financial information are in Class 36.

 

MULTIPLE CLASS APPLICATION ISSUES

 

The application identifies services that may be classified in additional international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.  The fee for filing a trademark application is $325 for each class.

 

If the applicant adds any classes, the applicant must do the following:

 

(1) specifically identify the services in each class and list them by international class with the classes listed in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

(2) submit a specimen showing use of the mark in each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  The applicant must verify that the new specimen was in use in commerce on or before the application filing date with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a).  If, however, the new specimen is of the same type as those already of record, the applicant need not verify the date of use.

 

(3) amend the application to include dates of first use and use in commerce for each class.  37 C.F.R. §2.86(a); TMEP §1403.01.  If the dates differ from those already of record, the applicant must verify the amendment with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

RESPONSE

 

If the applicant has particular questions regarding any of the issues set forth in this Office action, the applicant may telephone the assigned examining attorney.

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 198

fax: (703) 746-8108

douglas.lee4@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.