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  76/494853

 

The assigned examining attorney has reviewed the application and determined the following:

 

No Conflicting Marks Noted

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. §1052(d).  TMEP §704.02.

Identification of Goods

The identification of goods is unacceptable as indefinite for several reasons.  First, the applicant has used indefinite wording such as “apparatus,” “device,” “unit,” “instruments,” “supplies,” “data balance,” “data media,” “storage” “set top box” and “equipment” to describe the goods.  In addition, the identification does not specify whether goods used for recording such as the discs are blank or pre-recorded.  If they are pre-recorded, the applicant must specify the subject matter.

 

Further, the goods include computer programs.  The wording the applicant has used to identify the goods is unacceptable as indefinite.  The applicant must indicate not only that the goods are computer programs but also the purpose or function of the program.  TMEP §1402.03(d).  This additional information is necessary to permit this Office to reach judgments concerning possible conflicts between the applicant’s mark and other marks.  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). 

 In addition, the applicant must identify the card readers, firmware, memory, servers, drivers, chips, and all goods in the nature of cards with specificity.  The applicant must submit additional information concerning the “set-top-box” to permit proper consideration of the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.

 In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a). The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 The applicant may wish to consult the Trademark Manual of Identification of Goods and Services accessible through the Office homepage at www.uspto.gov. The Manual provides complete information concerning acceptable wording in the identification of goods and recitation of services as well as the appropriate classifications. Please note that Office policy prohibits the use of parentheses and slashes in the identification.

 The applicant may adopt the following, if accurate:

 

• ELECTRONIC BLACKBOARD FOR DISPLAYING GRAPHICS; ELECTRONIC ADVERTISING BOARD FOR DISPLAYING GRAPHICS; PRINTERS FOR USE WITH COMPUTERS; MEMORY CARDS; READ-ONLY MEMORY CARDS; MICROCOMPUTER; COMPUTER MAINFRAME; MICROPROCESSORS; DATA STORAGE UNITS, NAMELY, {INDICATE SPECIFIC GOODS, E.G., COMPUTER HARD DRIVES}; READ-ONLY STORAGE, NAMELY, {BLANK MAGNETIC DISKS}; DATA PROCESSING APPARATUS, NAMELY {INDICATE SPECIFIC GOODS, E.G., DATA PROCESSORS}; CENTRAL PROCESSING UNITS; DATA READ and ACCESS UNITS, NAMELY, {INDICATE SPECIFIC GOODS, E.G., DATA RECEIVERS}; MAGNETIC MEMORY CARDS; HARDWIRE BLANK DISKS; INKJET PRINTER; MICROCOMPUTER PROCESSORS; DATA PROCESSING APPARATUS, NAMELY, {INDICATE SPECIFIC GOODS, E.G., DATA PROCESSORS}; PROGRAMMABLE DATA ACCESS PROCESSOR; COMPUTER; OPTICAL DISK PLAYER; COMPUTER DISK DRIVER; HOUSEHOLD COMPUTER; NOTEBOOK-TYPE COMPUTER; COMPUTER DATA STORAGE MEMORY DEVICE, NAMELY, {INDICATE SPECIFIC DEVICE, E.G., READ ONLY MEMORY CARDS}; PALM-TYPE COMPUTER; RANDOM ACCESS MEMORY CARD; FLASH MEMORY CARDS; DRAWABLE COMPUTER HARD DISKS; PRINTERS; FIRMWARE, {INDICATE SPECIFIC FUNCTION, E.G., FOR GENERAL DATABASE MANAGEMENT IN THE FIELD OF {INDICATE FIELD IF USED IN A SPECIFIC FIELD}; PERSONAL COMPUTER; COMPUTER HARDWARE, NAMELY, COMPUTER SERVER; LIGHT-EMITTING ELECTRONIC POINTERS NOT FOR MEDICAL USE; BLANK OPTICAL DISK; FLASH CARD READERS; MAGNETIC CODED CARD READER; CD-RW COMPUTER DRIVER; MATHEMATICAL APPARATUS, NAMELY, {INDICATE SPECIFIC GOODS, E.G., CALCULATORS}; VIDEO GRAPHIC RECORDER; COMPUTER DATA INPUT AND OUTPUT RECORDER; CODE PEN FUNCTIONING AS {INDICATE PURPOSE, E.G., A READER} FOR RAM; COMPUTER SOFTWARE FOR LANGUAGE COMPILING; DATA PROCESSING EQUIPMENT, NAMELY, {INDICATE SPECIFIC GOODS, E.G.,  SCANNERS}; ELECTRONIC NOTE-BOOK COMPUTER; ELECTRONIC BOOKS RECORDED ON COMPUTER MEDIA IN THE FIELD OF {INDICATE SUBJECT MATTER}; PERSONAL DIGITAL ASSISTANT; PRERECORDED MAGNETIC DATA CARRIERS FEATURING {INDICATE SUBJECT MATTER}; OPTICAL CHARACTER CARD READERS; ELECTRONIC DATA BALANCE IN THE NATURE OF {INDICATE SPECIFIC GOODS IN CLASS 9}; DIGITAL VIDEO STORAGE UNIT, NAMELY, {BLANK VIDEO DISKS}; CD-RW COMPUTER HARD DRIVES; BLANK INTERFACE CIRCUIT CARD FOR COMPUTER; FLOATING POINT COMPUTER CHIPS; MEMORY CARDS FOR CONTROLLING PRINTERS; COMPUTER MEMORY CARDS FOR CONTROLLING PLOTTER; READ-ONLY MEMORY COMPUTER CHIP; MOTHER BOARD; ACCELERATOR BLANK CIRCUIT CARDS FOR COMPUTERS; BLANK GRAPHIC ACCELERATOR CIRCUIT CARD FOR COMPUTERS; BLANK IMAGE CIRCTUIT CARDS FOR COMPUTERS; BLNK IMAGE CATCH CIRCUIT CARDS FOR COMPUTERS; GRAPHIC CARD; BLANK AUDIO CARDS FOR COMPUTERS; BLANK EXTRACT MEMORY CARDS FOR COMPUTERS; VIDEO MEMORY CARDS FOR COMPUTERS; FAX MACHINE MEMORY CARDS; EXTEND MEMORY CARDS; COMPUTER MEMORY CARDS; PHOTOGRAPHIC CAMERA; COLOR FILM PROCESSORS; MINIATURE FILM VIDEO AND DIGITAL READER; MOVIE, PHOTOGRAPHIC AND SLIDE PROJECTOR AND SUPPLIES SAID GOODS, NAMELY, {INDICATE SPECIFIC GOODS IN CLASS 9, E.G., CINEMATOGRAPHIC FILM}; ELECTRON CAMERA; INTRUDER DETECTION AND MONITORING TV CAMERA AND EQUIPMENTS, NAMELY, {INDICATE SPECIFIC GOODS IN CLASS 9, E.G., BLANK RECORDING VIDEOTAPES}; VIDEO AND CASETTE TAPE RECORDER; DIGITAL VIDEO CAMERA; DIGITAL CAMERA; COLOR MONITORING CAMERA; CINEMATOGRAPHIC APPARATUS AND EQUIPMENT, NAMELY, {INDICATE SPECIFIC GOODS, E.G., VIDEO TAPE RECORDER AND VIDEO PROJECTOR}; AUDIO AND VIDEO COMPACT DISC PLAYER; AUDIO AND VIDEO DIGITAL CD PLAYER; VEHICLE RADIOS; AUDIO RECORDER; VIDEO RECORDER; MICROSCOPE; COSMOGRAPHIC INSTRUMENTS, NAMELY, {INDICATE SPECIFIC GOODS, E.G, TELESCOPES}; AMUSEMENT APPARATUS ADAPTED FOR USE WITH TELEVISION RECEIVERS ONLY, NAMELY, {INDICATE SPECIFIC GOODS, E.G., VIDEO GAME MACHINES FOR USE WITH TELEVISIONS}; MEDIA FAX DEVICE, NAMELY, {INDICATE SPECIFIC GOODS, E.G., FACSIMILE TRANSMISSION MACHINES}; VIDEO TELEPHONES; PORTABLE TELEPHONES; VIDEO CONFERENCE DEVICE, NAMELY, {INDICATE SPECIFIC GOODS, E.G., VIEDOPHONES}; GLOBAL POSITIONING SYSTEM RECEIVER; GLOBAL POSITIONING SYSTEM LAUNCHER; SEMICONDUCTORS; SEMICONDUCTOR CHIPS; SILICON TRANSISTOR; SILICON CHIPS; INTEGRATED CIRCUITS; MICRO PROCESSING COMPUTER CHIP; BLANK INTEGRATED CIRCUIT BOARD; MAGNETIC ENCORDER; COMPUTER PROGRAM FOR {INDICATE SPECIFIC FUNCTION, E.G., GENERAL DATABASE MANAGEMENT} FOR USE BY THE {INDICATE INDUSTRY}; COMPUTER SOFTWARE FOR {INDICATE SPECIFIC FUNCTION, E.G., FUNCTIONING AS SPREADSHEET SOFTWARE FOR THE COLLECTION OF DATA IN THE {INDICATE INDUSTRY}; MAGNETIC DATA MEDIA, NAMELY, {BLANK MAGNETIC COMPUTER TAPES}; BAR CODE READERS; CHROMATOGRAPHY APPARATUS FOR LABORATORY USE, NAMELY, {INDICATE SPECIFIC GOODS IN CLASS 9, E.G., GAS CHROMATOGRAPHY APPARATUS}. (CLASS 9).

 

TMEP §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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

Description of the Mark

The applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The statement may be in the following form:

 The mark consists of a shaded circle with an open center and two curved bands emanating from the circle.

Conclusion

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 enter 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.

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

If the applicant has any questions about the Office Action, please contact the assigned examining attorney.

 

 

 

 

 

/Linda M. Estrada/

Trademark Attorney, Law Office 105

(703) 308-9105, ext. 242

(703) 872-9825 Fax

ecom105@uspto.gov

 

 

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.

 

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.