UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE 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 section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/474388

 

The following issues were discussed in communication with W. Wayne Liauh, Esq. on June 4, 2003.

 

Application Not Filed within Reasonable Time After Signing

The applicant did not file this application within a reasonable time after the application was signed.  The Office considers one year between execution and filing as reasonable for all applicants and all papers.  For this reason, the applicant must submit a substitute verification or declaration under 37 C.F.R. §2.20 verifying its statement of a bona fide intent to use the mark in commerce.  TMEP §804.03.

Translation and Transliteration

The applicant must submit an English translation and transliteration of the non-Latin characters in the mark.  37 C.F.R. §2.61(b); TMEP §809.  The statement should read as follows:

 

The non-Latin characters in the mark transliterate to [specify] and this means [specify].

 

Classification and Identification of Services

The identification of services is unacceptable as indefinite.  TMEP § 1402.01.  In addition, the application identifies services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.  37 C.F.R. §2.6(a)(1). 

 

The applicant may adopt the following identification, if accurate:

 

Class 35:            Apartment house management.

 

Class 41:          Providing instruction and consultation in aerobic exercise;

 

Class 42:          Architectural design; interior decorating; landscape gardening; land surveying; computer program design for others; computer software design for others; computer systems analysis; [“computer data process” – this is unclear, the examiner suggests the following:] data recovery services, data conversion of computer program data or information; maintenance of computer software.

 

Class 43:            Hotels; motels; making hotel reservations for others; restaurants; cafeterias; cafes.

 

Class 44:          Beauty salons; hairdressing salons; [“sauna slimming” – this wording is unclear – must further specify or delete]; massage; manicuring; providing public bath facilities for hygiene purposes; professional consultancy for beauty related treatment; providing know-how in teaching aerobic exercises and fitness advisory services [Class 41]; Providing consultation and about foods and food nutrition counseling; health care; Computer program design Computer software design; Computer systems analyses; computer data process; Maintenance of computer software; Rental building management [Class 36]; Horoscope casting [Class 45]

 

Class 45:            Horoscope forecasting.

 

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 services that are not within the scope of services set forth in the present identification.

Requirements for Combined Application – Intent to Use or Section 44 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 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(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.  

 

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

 

Wendy B. Goodman

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(703) 308-9103, x409

(703) 746-8103 (fax)

ecom103@uspto.gov

 

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be 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 will be $335.00 per class for classes added on or after January 1, 2003.

 

 

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