Offc Action Outgoing

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  76/486806

 

Search for Reference Deferred

 

The examining attorney defers a search of the Office records until the applicant responds.  37 C.F.R. Section 2.61(b); TMEP section 704.02.

 

Class Headings Unacceptable for Identifications of Goods and Recitations of Services

 

The applicant uses the headings of the international classes as the identification of the goods and recitation of the services; the applicant has listed several goods class headings and just about all of the services class headings in its Class 42 recitation.  The headings indicate the general scope of the classes.  Although such broad designations are sufficient under the trademark laws and practice of many countries, the U.S. Patent and Trademark Office considers them too broad to identify the goods or services in a United States application.  Therefore, the applicant must amend the identification to indicate the specific common commercial name of the goods and services.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP section 1401.08.

 

In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP sections 804.08(c) and 1301.05.

 

Any identification of goods for computer programs or comparable goods must be sufficiently specific to permit determinations with respect to likelihood of confusion.  The purpose of requiring specificity in identifying computer programs is to avoid the unnecessary issuance of refusals on this basis where the actual goods of the parties are not related and there is no conflict in the marketplace.  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

The applicant must rewrite the identification of goods and recitations of services in their entirety because of the nature and extent of the amendment.  37 C.F.R. Section 2.74(b).

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods and/or services that are not within the scope of goods and/or services set forth in the present identification.

 

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.  

 

For your convenience, acceptable identifications of goods and services are available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html.

 

For Your Information

 

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 enters 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.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

To avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.

                                                                                                                                    (Date)

 

_______________________________________________________________________

(Signature)

 

_______________________________________________________________________

(Typed or printed name of the person signing the certificate)

 

The certificate-of-mailing procedure does not apply to the filing of trademark applications. 

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.

 

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

 

 

 

___________________________________________

/Ron Aikens/

Trademark Office, Law Office 103

Tel: (703) 308-9103, ext. 128

Fax: (703) 746-8103

Ron.Aikens@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.