Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/491465

 

The following issues were discussed in communication with Francine Hanson, Esq. on August 18, 2003.

 

Request For Information

 

The applicant should provide the following information to permit the examining attorney to reach an informed final determination concerning the proposed mark: The applicant should describe the specimen.  The applicant should also provide any available advertising, promotional or explanatory material concerning the goods and/or services. If no such explanatory or promotional material is available, the applicant should provide the information for competitors’ goods and/or services. The applicant may also furnish any other evidence the applicant considers relevant to the registrability of the proposed mark.  In re Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9 (Fed. Cir. 1982); 37 C.F.R. Section 2.61(b). TMEP §§814 and 1402.01(d).

 

 

Significance of the Mark

 

The applicant must indicate whether TERRAMUX  has any significance in the relevant trade, any geographical significance or any meaning in a foreign language.  37 C.F.R. Section 2.61(b).

 

 

Identification

 

The wording “computer…software for use in the transmission of voice, vide and data over computer networks; computer software for managing and monitoring the performance of computer networks” in the identification of goods is unacceptable as indefinite because it does not convey precisely the function of the software.  The applicant may amend this wording to TELECOMMUNICATIONS SOFTWARE FOR USE IN THE TRANSMISSION OF VOICE, VIDE AND DATA OVER COMPUTER NETWORKS in International Class 9 and/or COMPUTER SOFTWARE [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.] FOR MANAGING AND MONITORING THE PERFORMANCE OF COMPUTER NETWORKS in International Class 9, if accurate.  TMEP §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 or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant may wish to visit the Patent and Trademark Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ to find examples of acceptable identifications of goods and services.

 

 

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.

 

 

 

 

 

 

 

 

 

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: (703) 308-9111, ext. 468

Fax:  (703) 308-7191

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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