UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/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 76/502264

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Trisha A. Dore on September 15, 2003, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

SIGNIFICANCE AND TRANSLATION OF THE MARK

 

The applicant has indicated that the proposed mark does not have any significance or translation.

 

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

 

DUAL FILING BASIS

 

The applicant has filed asserting use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on use in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  If the applicant wishes to proceed relying on use in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b). 

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

International Class 9:            Computer software for use as network management tools to determine the availability and performance of a network system, to monitor the networked devices communicating over it, to observe network security status and to provide information for network traffic analysis and troubleshooting used throughout the supply chain including, rail, ports, freight, manufacturing, production and warehousing environments and public buildings, hotels and corporate premises; and

 

International Class 42:            Technical support services, namely, troubleshooting of computer hardware and software problems for use as network management tools to determine the availability and performance of a network system, to monitor the networked devices communicating over it, to observe network security status and to provide information for network traffic analysis and troubleshooting used throughout the supply chain including, rail, ports, freight, manufacturing, production and warehousing environments and well as public buildings, hotels and corporate premises.  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 or services that are not within the scope of the goods and services recited in the present identification.

 

 

INSUFFICIENT FEE

 

The application identifies goods and services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.   As of the date of this action, the applicant has paid one filing fee.

 

 

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.  37 C.F.R. §2.6(a)(1). 

 

 

SPECIMENS

 

The specimens do not show use of the mark for any services identified in the application.  The applicant must submit one specimen showing use of the mark for the services specified.  37 C.F.R. Sections 2.56 and 2.58.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. 

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by the applicant.  

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

                        _____________________________                                   

                                    (Signature)

 

                        _____________________________

                        (Print or Type Name and Position)

 

                        _____________________________

                                    (Date)

 

 

Substituting a basis

 

If the applicant cannot comply with the requirement for a specimen of use for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.

 

In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. Sections 2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b);  37 C.F.R. Section 2.34(a)(2)(i).  See above for a properly worded declaration under 37 C.F.R. Section 2.20. 

 

 

 

/Bridgett G. Smith/

Examining Attorney

Law Office 115

(703) 308-9115 x 217

(703) 872-9237 fax

 

 

 

 

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