Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/497146

 

This letter responds to the applicant’s communication filed on November 15, 2004.  The applicant proposed amendment to the  identification of goods and amended to seek registration on the Supplemental Register. Neither proposed amendment is acceptable.  The FINAL refusal to register is maintained.

 

Identification

The proposed amendment to the identification cannot be accepted because it refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.  The wording substitutes “registered representatives” for “investment product providers”.  While these descriptions are vague, they are not equal.  While the original identification states that the goods provide “customized fund fact sheets”, the proposed amendment does not.  The original identification states that the goods are used for purposes of “peer group comparisons” but the proposed amendment does not.  Identifications must be precise.  The rule against broadening the scope of the identification is an important tool in the preservation of fair notice to the public. UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/497147

 

This letter responds to the applicant’s communication filed on November 15, 2004.  The applicant proposed amendment to the  identification of goods and amended to seek registration on the Supplemental Register. The proposed identification is unacceptable. Amendment to the Supplemental Register is acceptable and the requisite additional search has revealed no likelihood of confusion. The FINAL refusal to register due to unacceptable identification  is maintained.

 

Identification

The proposed amendment to the identification cannot be accepted because it refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.  The wording substitutes “registered representatives” for “investment product providers”.  While these descriptions are vague, they are not equal.  While the original identification states that the goods provide “customized fund fact sheets”, the proposed amendment does not.  The original identification states that the goods are used for purposes of “peer group comparisons” but the proposed amendment does not.  Identifications must be precise.  The rule against broadening the scope of the identification is an important tool in the preservation of fair notice to the public.  The inclusion of precise wording such as “software tools, namely, graphical charts, text and completing forms” is helpful because it gives the public a better idea of how the software works and explains the specific nature of  the software.

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.

 

 

Search

 

The examining attorney has searched the Office records in light of the applicant’s amendment to the Supplemental Register 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.

 

 

 

 

 

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.

 

 

USPTO

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: 571-272-9397

Fax: 571-273

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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

 

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.

 

Section 2(f)/ Supplemental Register Inappropriate

As advised in the original office action, because this application was filed on the basis of a bona fide intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and  the applicant has not alleged use of the mark in commerce in either an amendment to allege use or a statement of use, any  claim of distinctiveness under Section 2(f) is inappropriate.

Moreover, the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is also not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 708.01.

 

 

 

 

 

 

 

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.

 

 

USPTO

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: 571-272-9397

Fax: 571-273

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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