Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/468310

 

This letter responds to Applicant’s communication filed on 11-30-05.  Applicant responded by amending the recitation of services and submitting a copy of the foreign registration.  The assigned examining attorney has reviewed Applicant’s response and determined the following.  Applicant's copy of the foreign registration is accepted and has been entered into the record.  However, Applicant's recitation of services remains unacceptable.  Therefore, the following requirements are herein made FINAL.

 

Recitation of Services

Applicant must clarify the identification of services to better specify the nature of the services as well as their main purpose and their particular field of use or channels of trade if possible. Please note that the recitation of services for classes, 36, 41, 42, 43 and 44 are acceptable.

 

Please note the following guidelines when amending the identification of goods:

 

· Registered marks are not to be used in the application to describe applicant's goods/services.  TMEP §1402.09.

 

· Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.

 

· 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.

 

· For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Applicant may adopt the following identification of goods/services, if accurate.  TMEP § 1402.01.

 

International Class 35: Business marketing and promotion; business management provided as part of marketing, promotion, advertising and any associated communication services for others; medical marketing comprising direct to patient and direct to consumer marketing programs; business consultation; business planning; strategic business planning; personnel recruitment by telephone; direct marketing/advertising for others; data processing services; market research; public relations; preparing advertising for others; computerized database management, namely, compilation of marketing, promotional and advertising information into computer databases and marketing, promotional and advertising data capture, compilation, input and processing; arranging, conducting and organizing exhibitions for business, commercial or advertising purposes; PROVIDING AND MANAGING ON-LINE BUSINESS SERVICES FOR ATTENDEES AT EXHIBITIONS, CONFERENCES, CONGRESSES, CONVENTIONS, SEMINARS, FORUMS AND SYMPOSIA, NAMELY, (Applicant must specify the exact nature/name of the "business services" that are provided.); public relations services, namely, publicity services in the form of marketing, promotion and advertising; advertising services, namely, corporate and/or product branding and/or identity services; publication of publicity texts; rental of office machines and equipment; providing business marketing information; BUSINESS CONSULTATION SERVICES NAMELY, ORGANIZING, MANAGING, MARKETING AND PROMOTING FUND RAISING CAMPAIGNS OF OTHERS; BUSINESS AND MARKETING SERVICES NAMELY TRADE DRESS CREATION AND DESIGN FOR OTHERS AT EXHIBITIONS, CONFERENCES, CONGRESSES, CONVENTIONS, SEMINARS, FORUMS, AND SYMPOSIA; PREPARING AND PLACING ADVERTISEMENT SIGNS FOR OTHERS AT EXHIBITIONS, CONFERENCES, CONGRESSES, CONVENTIONS, SEMINARS, FORUMS, AND SYMPOSIA; advisory, consultancy and information services relating to any of the aforesaid services;

International Class 37: Construction and installation of exhibition booths and stands; and advisory, consultancy and information services relating to any of the aforesaid services

International Class 38: Telecommunication services and broadcasting services for use by attendees at exhibitions, conferences, congresses, conventions, seminars, forums and symposia, NAMELY, (APPLICANT MUST NAME AN ACTUAL SPECIFIC TELECOMMUNICATION SERVICE, E.G. PROVIDING LONG DISTANCE TELEPHONE SERVICES, ELECTRONIC MAIL SERVICES, ETC.); internet and intranet broadcasting services; video conferencing services, namely, providing facilities and equipment for video conferencing; providing, creating and managing on-line electronic bulletin boards for the transmission of messages and data among computer users in the medical and healthcare field; and advisory, consultancy and information services relating to any of the aforesaid services

International Class 39: TRAVEL ARRANGEMENT AND RESERVATION SERVICES FOR USE BY ATTENDEES AT EXHIBITIONS, CONFERENCES, CONGRESSES, CONVENTIONS, SEMINARS, FORUMS AND SYMPOSIA, NAMELY, (APPLICANT MUST SPECIFY THE ACTUAL SPECIFIC TRAVEL SERVICE, E.G. ARRANGING TRAVEL TOURS, ETC.); TRAVEL AND RESERVATION INFORMATION THEREFOR, ALL PROVIDED ON-LINE FROM THE INTERNET OR AN INTRANET; TRAVEL AND TOUR TICKET RESERVATION SERVICE FOR TRAVELERS; and advisory, consultancy and information services relating to any of the aforesaid services

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the Applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

 

 

/tmm/

Theodore McBride

HELP LINE: 571-272-9250

theodore.mcbride1@uspto.gov

phone: 571-272-9281

fax: 571-273-5281

 

 

 

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 has been 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.