Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

Serial Number   76/468310      

NOTICE OF SUSPENSION

The Office has reassigned this application to the undersigned examining Attorney.  Action on this application is suspended pending the disposition of:

 

                        - Application Serial No(s). 76343715, 75829566

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

In addition, action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant's country of origin.  If the registration is in a foreign language, an English translation must be submitted. The true copy, photocopy, certification, or certified copy of the registration should be forwarded to the Examining Attorney as soon as possible.  If the foreign application is abandoned, the Examining Attorney should be advised.

 

Applicant should note the following:

The likelihood of confusion refusal as to 2004232 and 1301384 has been withdrawn.

 

Identification of Goods/Services

The identification of goods/services remains unacceptable as indefinite. The applicant may adopt the following identification of goods/services, if accurate.  Please note that this Office’s Identification of Goods and Services Manual is accessible online at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/manual.html. 

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. Section 2.71(a); TMEP section 804.09.  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.

 

International Class 9: prerecorded magnetic data carriers featuring recordings and/or reproductions of images, data and/or sound; sound, image and/or data recording, transmission, reproduction and/or processing apparatus, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses); sound, data and/or image recording media, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses); digital projection media, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses); electronic personal organizers namely, pdas; electronic voting pads; training and/or teaching apparatus and instruments, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses); computer software for (applicant must indicate use) in the field of (applicant must indicate field; computer programs for (applicant must indicate use) in the field of (applicant must indicate field; electronic publications, namely, (applicant must indicate type of publication, e.g. newspaper, newsletter, book, magazine, etc.) in the field of (applicant must specify field, e.g. camping, pole vaulting, lint); data storage devices, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses); blank audio cassettes; compact discs featuring (applicant must specify subject matter); multimedia software recorded on cd-roms (applicant must indicate subject matter or area of use); cd-is, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses); dvds featuring (applicant must specify subject matter of dvds, e.g. penguins, slippers, etc.); photographic slide transparencies and slide kits consisting primarily of photographic slide transparencies, slide folders and supporting documentation for slides

 

International Class 16: printed matter, namely (applicant must specify common commercial name or describe the product[s] and its/their intended uses); printed publications, namely, (applicant must indicate type of publication, e.g. newspaper, newsletter, book, magazine, etc.) in the field of (applicant must specify field, e.g. camping, pole vaulting, lint); journals (applicant must specify type or subject matter); books (applicant must specify type or subject matter); posters; leaflets about (applicant must specify subject matter); pamphlets about (applicant must specify subject matter); stationery; instructional and teaching material, namely, (applicant must specify common commercial name or describe the product[s] and its/their intended uses)

 

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 requirement 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; 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; rental of office machines and equipment; providing business marketing information and consultation

 

International Class 36: venture capital funding services, namely, organization, management, marketing and promotion of fund raising campaigns

 

International Class 37: construction and installation of exhibition booths and stands; dressing and signage of exhibitions, conferences, congresses, conventions, seminars, forums, symposia and rooms, namely, (the applicant must further specify a service and explain what is meant by dressing and signage); advisory, consultancy and information services relating to any of the aforesaid services

 

International Class 38: telecommunication services for use as part of marketing, promotion and advertising and any associated communication services for others, namely, (applicant must name an actual specific telecommunication service, e.g. providing long distance telephone services, electronic mail services, etc.); ???-broadcasting services (applicant must specify type, e.g. audio, television, video etc.); internet and intranet broadcasting services; video conferencing services, namely, providing facilities and equipment for video conferencing; providing, creating and managing online electronic bulletin boards for the transmission of messages and data among computer users concerning creating the medical and healthcare field; advisory, consultancy and information services relating to any of the aforesaid services

 

International Class 39: travel arrangement and reservation services, namely, (applicant must specify the actual specific travel service, e.g. arranging travel tours, etc.); arranging travel tours and providing travel and reservation information therefor, all provided on-line from the internet or an intranet; transportation of passengers and goods by (applicant must specify specific means e.g. air, boat, pack mule, hamster, hot air balloon, etc.); transportation of furniture, exhibition stands and booths by (applicant must specify specific means e.g. air, boat, pack mule, hamster, hot air balloon, space shuttle, inter-dimensional warp fields, etc.); arranging for travel tickets for travelers; storage of goods, furniture, exhibition stands and booths; advisory, consultancy and information services relating to any of the aforesaid services

 

International Class 41: education and training services in the field of (applicant must specify the field or subject matter, e.g. skydiving, urban myths, ostrich racing); medical education courses; publication of printed matter, namely, (applicant must specify the printed matter, e.g. books, leaflets, manuals, etc.); publication of non-downloadable electronic books and journals on-line; on-line nondownloadable publication of (applicant must specify something significantly more specific than ‘information’, e.g. books, brochures etc.); information relating to health education provided on-line from a computer database, the internet or an intranet; providing, devising and publishing distance learning courses in the field of (applicant must specify the field of courses); commissioned writing; copy writing for others; audio and/or visual production services; video production services; production of video news releases and bulletins; ???-editing (applicant must specify the type of editing, e.g. video, film, etc.); editing of written texts; preparation of texts for publication; correspondence schools; arranging and conducting and organizing workshops, conferences, congresses, conventions, seminars, forums and symposia for business, commercial, advertising or educational purposes in the field of (applicant must specify the field of the workshops, conferences, congresses, conventions, seminars, forums and symposia); arranging, conducting and organizing award ceremonies; organization of entertainment, social, cultural and sporting activities and social events; rental, hire and leasing of lighting, projectors and projection equipment, audio and visual apparatus and equipment, television sets, video recorders, dvd players, data storage devices, cd-roms, video cassettes and discs, dvds, cd-is, educational and instructional materials; publication of publicity leaflets (note, ‘texts’ is too vague); development for others, of distance learning courses; advisory, consultancy and information services relating to any of the aforesaid services;

 

International Class 42: advisory, consultancy and information services relating to (applicant must specify a more specific field other than science and technology); technical support services, namely, information technology support services; data mining , namely, data analysis and compilation; accreditation services namely, evaluating the skills and services of others for the purpose of certification in the field of (applicant must specify the field); continuing medical education accreditation services; design for others in the field of (applicant must specify field, e.g. computers, engineering, etc.); corporate design, namely, design of (applicant must specify that which is being designed), design of marketing support material, design of websites and webcasts, databases and computer software; maintaining websites for others; website hosting services, namely, hosting the websites of others on a computer server for a global computer network; computer programming for others; rental of computer software and hardware; rental of computer server space; advisory, consultancy and information services relating to any of the aforesaid services;

 

International Class 43: reservation services, namely, making hotel reservations for others; arranging temporary housing accommodations; organizing catering services; provision of facilities for exhibitions, conferences, congresses, conventions, seminars, forums and symposia; rental, hire and leasing of furniture, exhibition stands, booths, podiums and banners; advisory, consultancy and information services relating to any of the aforesaid services

 

international class 00: [note: classification depends on subject matter of hot line] telephone help line counseling services, namely, offering advice regarding (applicant must indicate subject area of help lines, e.g. substance abuse, space travel, government conspiracies etc.)

 

Multiclass Application

The Applicant lists goods/services that belong in different international classes.  If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/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 goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  The fee for filing a trademark application is $335 for each class.

 

(3)  The applicant must submit: 

 

(a) 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. §§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, and/or

 

(b) 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.

 

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

 

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

 

                                                                                 /tmm/

Theodore McBride

Trademark Attorney

Law Office 103

703-308-9103 x 129

Fax: 703-746-6498

Formal Responses: ecom103@uspto.gov