UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/482913

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 76144629, 76332096, 78033307 and 78048498.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the marks in the above noted applications under Section 2(d) of the Act.  The filing dates of the referenced applications precede the applicant’s filing date.  If one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

 

 

 

Identification and Classification of Goods and Services

The wording in the identification of goods is unacceptable as indefinite because it is not sufficiently clear to allow for proper classification.  Moreover, the wording is too broad because it could include items classified in other classes.  The applicant may amend the identification to the following, if accurate:

 

“Computer software, namely, [identify the function or purpose, and the intended field of use]; computer security software for controlling and limiting access to computer systems; computer utility software; software to prevent access to data by hackers; software to enable the secure storage of data; encryption software; software to enable the creation and sending of encrypted e-mails; software to enable the permanent deletion of data from computers; hard disk-drive maintenance and management software; web browser content monitoring, filtering and blocking software; file management software for creating, reading and maintaining data files for use in multiple computer architectures; file content monitoring software,  namely, computer software to monitor the content of computer files; data storage and retrieval software; computer software to back up computer data, including computer software that can back up computer data by accessing the data via the internet; computer system security audit software, namely, computer software that automatically performs an audit to assess the security of computer software programs; computer anti-theft software, namely, computer software to prevent theft of computer hardware” in International Class 9

 

“Providing a high speed access to area networks and a global computer information network to enable users to retrieve stored electronic data” in International Class 38

 

“Secure electronic storage of electronic data” in International Class 39

 

“Consultancy in the field of information technology; computer systems analysis and consultancy; computer programming services for others; computer software design for others; updating of computer software for others;  performing audits to assess the degree of security of the computer systems of others; recovery of computer data; creating and maintaining websites for others; hosting the web sites of others on a computer server for a global computer network” in International Class 42.

 

TMEP §§1402.01, 1402.03 and 1402.11.

 

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

 

Combined Applications

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.  

 

Fee Increase

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.

 

 

/Nelson B. Snyder III/

Trademark Attorney

Law Office 103

(703) 308-9103 ext. 147

(703) 746-8103 (fax)

ecom103@uspto.gov

 

 

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

 

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