Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number 76/488080

 

 

Applicant is requesting reconsideration of a final refusal dated May 12, 2004.

 

Request for Reconsideration: Final Refusal Maintained; Issue(s) Addressed

 

The applicant has requested reconsideration of the refusal to register the mark based on an indefinite identification. The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the final refusal is maintained.

 

However, as a result of the applicant’s response, new issues have been brought to light that must be addressed. The examining attorney has determined the following:

 

Identification of Goods – Class 9

 

The identification of goods was refused as unacceptable for indefiniteness.  The identification of goods submitted in response to the examining attorney’s refusal is also unacceptable as indefinite because the applicant did not supply the function of the software as requested and required. In addition, the applicant should note that in this context, use of the word “platform” suggest that the mark is to be applied to something akin to a computer language or other method by which computer goods speak to each other and convey information. Computer languages and similar methodology are not “goods in trade” or even “services,” for which a mark may be registered. Trademark Act Sections 1, 2 and 45, 15 U.S.C. Sections 1051, 1052 and 1127.  See Loglan Institute, Inc. v. Logical Language Group, Inc, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) ("Because a language is not 'goods' or 'services' under the Act, . . . a name originated for a new language is inherently not registrable for the language."). The majority of the software references fail to state clearly the function of the software, e.g., “collaboration software.” What function does this software perform? What type of collaboration is occurring? “Monitoring software” – What is being monitored? “Supply chain software” – does this software keep track of inventory? “Logistics software” – what function is performed by this type of software. “Identification software” – does this software confirm the identity of users logging on to the network system or is it merely for recording information about a persons identity for personnel records? “Business integration software” – how does the software assist in integrating a business? If the applicant merely has database management software that it uses to organize data and statistics in a wide variety of fields, the applicant should state so plainly. The applicant may amend the ID as follows, if accurate:

 

Computer programs and software for use in business, information technology, data management, production and materials management, quality management, plant maintenance, marketing and sales, personnel management, and project management, namely, [specify the function of the software by its common commercial name, e.g., database management software for use in managing personal and business information, spreadsheet software, word-processing software, etc.]; software for application and database integration; software integration and application , also known as [give the common commercial name for this software or explain the function of this software more fully] ; software for resource management; research and development software, also known as [give the common commercial name for this software or explain the function of this software more fully]; application development software; communications and telecommunications software, also known as [give the common commercial name for this software or explain the function of this software more fully]; device integration software , also known as [give the common commercial name for this software or explain the function of this software more fully]; business process software, also known as [give the common commercial name for this software or explain the function of this software more fully]; data management software, also known as [give the common commercial name for this software or explain the function of this software more fully]; predictive maintenance software, also known as [give the common commercial name for this software or explain the function of this software more fully]; field service management software, also known as [give the common commercial name for this software or explain the function of this software more fully]; adaptive manufacturing software, also known as [give the common commercial name for this software or explain the function of this software more fully]; supply chain software, also known as [give the common commercial name for this software or explain the function of this software more fully]; logistics software, also known as [give the common commercial name for this software or explain the function of this software more fully]; identification software, also known as [give the common commercial name for this software or explain the function of this software more fully]; customer relationship and management software; monitoring software, also known as [give the common commercial name for this software or explain the function of this software more fully]; collaboration software, also known as [give the common commercial name for this software or explain the function of this software more fully]; graphical user interface software; object modeling software , also known as [give the common commercial name for this software or explain the function of this software more fully]; business process integration software , also known as [give the common commercial name for this software or explain the function of this software more fully]; composite software which invokes and modifies or integrates other software applications and components, in International Class 9, in International Class 9.

 

TMEP section 1402.01.

 

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 1402.01.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

For the foregoing reason, the refusal based on an unacceptable identification of goods is maintained and made FINAL.

 

Options – 30 days to Comply or Class 9 Goods Are Abandoned

 

The applicant responded to a Final Action. This response raised no new issues but it does constitute a good faith attempt to comply with the noted issues. As such, the response is considered a Request for Reconsideration. Under TMEP Sections 715.03 and 715.03(a), if, in a request for reconsideration, the applicant makes a good faith, but incomplete, attempt to comply with all outstanding requirements and to overcome all outstanding refusals, the examining attorney has the discretion under 37 C.F.R. §2.65(b) to give the applicant additional time to resolve the matters that remain outstanding.  See TMEP §718.03(b).  This should be done only if the record indicates that the applicant can place the application in condition for approval by completing the response.  In this situation, if the examining attorney believes that an examiner’s amendment (see TMEP §§707 et seq.) will immediately put the application into condition for publication or registration, the examining attorney may issue the examiner’s amendment.  If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), this does not extend the deadline for appeal.  15 U.S.C. §1062(b); 37 C.F.R. §2.142(a). 

 

The applicant is hereby granted 30-days to comply with request for a definite identification of goods.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

/Ronald E. Aikens/

Trademark Attorney, Law Off. 103

(571) 272-9268 (wk)

(571) 273-9268 (fax)

Ron.Aikens@USPTO.gov