UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/482562
APPLICANT: Esmertec AG
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CORRESPONDENT ADDRESS: ADRIENNE L. WHITE, ESQUIRE BURNS, DOANE, SWECKER & MATHIS, L.L.P. POST OFFICE BOX 1404 ALEXANDRIA, VIRGINIA 22313-1404
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: JECO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 009765-041
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/482562
The following responds to the applicant’s communication filed on December 15th, 2003.
The registration of the application was originally denied for the following reasons:
The applicant has properly stated that the term “JECO” has no particular significance, translation value or industry meaning. The applicant has provided the United States Patent and Trademark Office with an amended recitation of services, which is again unacceptable as indefinite.
The applicant has amended to is identification of services to the following:
“EDUCATIONAL TRAINING SERVICES FOR COMPUTER LANGUAGES AND CODING IN THE FIELD OF WIRELESS COMMUNICATION, MOBILE AND EMBEDDED DEVICES; EDUCATION SERVICES INCLUDING CONDUCTING SEMINARS, WORKSHOPS AND TRAINING PROGRAMS AS WELL AS THE DISSEMINATION AND DISTRIBUTION OF EDUCATIONAL MATERIALS” in International Class 41;
“CONSULTATION, TECHNICAL AND MARKETING SUPPORT SERVICES IN THE FIELD OF WIRELESS COMMUNICATION TECHNOLOGIES, BASED ON SPECIFIC COMPUTER LANGUAGES AND CODING” in International Class 42.
The listed “EDUCATIONAL TRAINING SERVICES FOR COMPUTER LANGUAGES AND CODING IN THE FIELD OF WIRELESS COMMUNICATION, MOBILE AND EMBEDDED DEVICES” is acceptable in International Class 41.
The listed “EDUCATION SERVICES INCLUDING CONDUCTING SEMINARS, WORKSHOPS AND TRAINING PROGRAMS AS WELL AS THE DISSEMINATION AND DISTRIBUTION OF EDUCATIONAL MATERIALS” is ambiguous, construed to be too broad and requires greater specificity regarding the exact nature of services rendered. Please note, the term “including” does not properly specify or narrow the scope of services rendered. As such, the services may potentially entail all “education services,” thereby rendering it as too broad in nature. If the applicant wishes to specify the exact category and scope of services, then the term “namely” may be used. Furthermore, the applicant must specify the subject matter nature of the educational services. The applicant may adopt the following suggested recitation, if accurate:
The listed “CONSULTATION, TECHNICAL AND MARKETING SUPPORT SERVICES IN THE FIELD OF WIRELESS COMMUNICATION TECHNOLOGIES, BASED ON SPECIFIC COMPUTER LANGUAGES AND CODING” is ambiguous, construed to be too broad and requires greater specificity regarding the exact nature of services rendered.
Please note that “marketing” (promotional services) oriented services are typically placed in International Class 35. Please additionally note that technical telecommunications consultation is properly placed in International class 38, while computer consultation services are placed in International Class 42. However, if the telecommunication/computer consultation is primarily geared toward a marketing/promotion oriented nature (promoting telecommunication/computer industry interests), then the services are actually business marketing consultation services, which are properly placed in International Class 35 (which the examiner believes is accurate).
The applicant may adopt the following suggested recitation of services, if accurate (please note, for accuracy reasons, the promotional nature of the services is specified):
The suggested identification specifies and properly classifies the services rendered. 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 the services recited in the present identification.
This is not an exhaustive list of identifications. Please check the Office’s website for additional acceptable identifications of goods and services at the following website:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. When an application is filed pursuant to Section 44(d), this Office presumes, unless otherwise indicated, that the applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S. TMEP §§806.02(f) and 1003.03. Under such circumstances, the application may not be approved for publication until a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation have been filed. It is customary for the translator to sign the translation.
Pending the requirement for an acceptable recitation of services (and potential additional fees requirement), the application is otherwise in condition for publication. Therefore, action on this application is SUSPENDED pending receipt of the foreign registration and, if appropriate, an English translation. TMEP §§806.02(f) and 1003.04.
If the applicant wishes to proceed relying on its intent to use the mark in commerce as the sole basis for registration, the applicant may instruct the examining attorney to approve the case for publication based solely on the Section 1(b) basis (upon meeting the recitation of services requirements). If the applicant does so, the applicant retains its priority claim under Section 44(d). TMEP §§806.02(f) and 806.04(b). Of course, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. The TARR database is available 24 hours a day, 7 days a week. Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday.
Christopher Scott Adkins
/Christopher S. Adkins/
Christopher Adkins
Examining Attorney
Law Office 113
(703) 308-9113 xt. 437
How to respond to this Suspension 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS SUSPENSION ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.