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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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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Serial Number 76/482562
The following issues were discussed in communication with Adrenne White on March 18th, 2003.
Recitation of Services
The applicant has applied to register the mark “JECO” for the following:
“EDUCATIONAL SERVICES FOR THE PROMOTION OF JAVA TECHNOLOGY IN THE MOBILE AND WIRELESS TELECOMMUNICATION MARKET” in International Class 41;
“SUPPLYING AND PROVIDING SERVICES FOR THE PROMOTION OF JAVA TECHNOLOGY IN THE MOBILE AND WIRELESS TELECOMMUNICATION MARKET” in International Class 42.
The recitation of services is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name of the services or their nature. TMEP section 804. The examining attorney additionally notes that 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).
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.
Please generally note that the term “JAVA”â is a registered trademark, may not be used in a recitation and must be deleted.
The “educational services” are ambiguous and require greater specificity regarding the exact nature of these services. The nature of the applicant’s educational services may include (but not limited to):
International Class 35
The applicant may adopt the following suggested recitation of services, if accurate:
“Computer education training services in the field of computer languages and coding; educational services namely conducting programs in the field of mobile and wireless telecommunication computer languages and coding” in International Class 41;
“Computer consultation in the field of mobile and wireless communication technologies which use specific computer languages and coding; computer network design for others which facilitates the promotion of specific computer languages and coding” in International Class 42.
The suggested recitation specifies and properly classifies the services. 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 must indicate whether “JECO” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
No set form is required for response to this Office 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. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
Christopher Scott Adkins
Examining Attorney
Law Office xxx
(703) 308-91xx ext.xxx437
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
The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) a service cannot be merely an ancillary activity or one which is necessary to the applicant's larger business (i.e., the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service). In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB 1992); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979). If the applicant is promoting its own goods or services, then this is not an actual activity performed for the benefit of another (as it is the applicant itself which benefits).