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  76/493265

 

The following issues were discussed in communication with Andrew Price on 8-19-03.

 

RECITATION OF SERVICES INDEFINATE

 

The recitation of services only for class 42 is unacceptable as indefinite as well as misclassified. More specifically, “providing multiple user access” is a class 38 service while “and other goods and services in the field of supply chain management” embodies an array of goods and services.   The applicant must amend the recitation to indicate the nature of the services and their particular field.  TMEP section 1402.

 

The applicant may adopt the following recitation of services, if accurate: 

 

Providing multiple-user access to a global computer information network for the purpose of allowing users to obtain tracking and tracing information, perform data analysis and transactions regarding shipments of goods in transit, in the field of supply chain management in class 38. 

 

 

 

Applicant should note that this is a class 38 service because the applicant is providing “access” not merely a website containing information.  For example, “access” would consist of dialup numbers and connection services such as that provided by AOL® or Earthlink® to connect to the global computer network.  It would perhaps be more accurate to omit the “providing multiple user access” portion of the identification and instead state the following (if accurate),

 

Business management services, namely, managing logistics, reverse logistics,  supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution processes for others in class 35

           

Providing an online computer database that provides logistical information on the shipping industry in the field of obtaining tracking and tracing information, performing data analysis and transactions regarding shipments of goods in transit, in the field of supply chain management in class 39

 

The applicant is invited to use the on-line version of the Trademark Acceptable Identification of Goods and Services Manual to craft an acceptable identification.  The Manual is available on the Patent and Trademark Office’s home page at www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual includes explanations and notices of classification policy, and provides examples of acceptable identifications.

 

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 1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

MULTIPLE CLASS APPLICATION – ITU OR SECTION 44

 

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.  

 

SIGNIFICANCE INQUIRY

 

The applicant must indicate whether IPLEX is an acronym and if so, what it stands for.  Also, the applicant must indicate whether IPLEX has any significance in the relevant trade, any geographical significance, foreign language significance or meaning with respect to the goods and/or services.  37 C.F.R. Section 2.61(b).

 

 

 

 

 

/Brett Tolpin/

Attorney-Advisor (Trademarks)

Law Office 115

Phone:  (703) 308-9115 x292

Fax:      (703) 872-9875

ecom115@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