UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/503020
APPLICANT: SKILLSNET CORP.
|
|
CORRESPONDENT ADDRESS: WILLIAM A. MUNCK DOCKET CLERK P.O. DRAWER 800889 DALLAS, TEXAS 75380
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
MARK: SKILLSNET
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: SKIL01-00021
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/503020
This letter responds to the applicant's communication filed on March 26, 2004. The applicant (1) submitted a substitute drawing, (2) did not amend the recitation of services and (3) argued against the refusal to register the mark under Section 2(d) of the Trademark Act.
The refusal to register the mark under Section 2(d) is withdrawn.
The substitute drawing is acceptable.
The requirement to amend the recitation of services is continued and made FINAL.
Recitation of Services
The recitation of services is unacceptable as indefinite. The wording “development…of occupational, workforce and employment systems relating to skills standards, assessments and certifications” in the identification of services needs clarification because it is too broad and could include services classified in other international classes. TMEP §§1402.01 and 1402.03.
The applicant may adopt the following recitation, if accurate: TMEP §1402.11.
Class 35
Development and analysis of occupational, workforce and employment standards relating to skills standards, assessments and certifications, namely, work analysis to determine worker skill sets and other worker requirements, and job profiling, namely, testing to determine job competency and skills management, namely, testing to determine employment skills, all services provided in person and on-line via the Internet.
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(a); TMEP section 804.09. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
This requirement is made FINAL.
Options
Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Alice Benmaman/
Trademark Attorney
Law Office 116
(703) 306-7911
FX: (703) 746-8116
RESPOND AT http://www.gov.uspto.report/teas/index
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.