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  76/465980

 

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

 

Please note:  The issues raised can be resolved by telephone.  The applicant is encouraged to telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

Search

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 §704.02. 

 

However, in order for the mark to be registerable, the applicant must respond to the following requirements:

 

 

 

Requirements

Recitation of Services - Indefinite

The recitation of services is unacceptable as indefinite and too broad because it could include services classified in other classes and it does not adequately specify the nature of the services rendered (see examining attorney’s suggestions below).  The applicant may adopt the following recitation, if accurate:  

 

Class 036:            “Currency exchange and advice; viatical settlement services;” and

 

Class 042:            “Real estate settlement services.”

 

TMEP § 1402.11.

 

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

 

For your assistance and convenience, the “Acceptable Identifications of Goods and Services Manual” may be searched at the Office’s global network computer website address of  http://www.gov.uspto.report/main/trademarks.htm.

 

Multiple Class Application

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 list the services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date. 

 

Disclaimer

The applicant must disclaim “FX” apart from the mark as shown because the letters stand for “currency exchange” and are generic when used in connection with the services.  FX abbreviation

Foreign exchange.[1]  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). 

 

A properly worded disclaimer should read as follows:

 

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

 

Opportunity to Respond

No set form is required for response to this action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.  If the applicant has any questions or needs assistance in responding to this action, please telephone the examining attorney.

ADVISORY NOTE:  Fee Increase Effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services is $335.00 per class for classes added on or after January 1, 2003.

 

 

/Tricia L. Sonneborn/

Examining Attorney Law Office 110

Phone:  703.308.9110 ext. 138

Fax:      703.746.8110

Formal e-Response: ecom110@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.