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  76/506424

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Insufficient Fee

 

The application identifies 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. 

 

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). 

 

Classification of Services

 

The applicant has classified “printing” and “typesetting” in International Class 42.  The correct classification is International Class 40.  The applicant must either delete “printing” and “typesetting” or add International Class 40 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The applicant has classified “photography,” “print and multimedia services,” “copywriting services,” and “commissioned writing” in International Class 42.  The correct classification is International Class 41.  The applicant must either delete “photography,” “print and multimedia services,” “copywriting services,” and “commissioned writing” or add International Class 41 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  See below for an acceptable identification of these services. 

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite.  The applicant must identify with greater specificity “advertising and business services,” “commercial…design,” “database accessing,” “print and multimedia services,” “copywriting services,” and “design, drawing and commissioned writing, all for the compilation of web pages on the Internet.”  The applicant must also specify that the “packaging design,” “copywriting services,” and “creating and maintaining web sites” are services for others.  The applicant may adopt the following recitation, if accurate: 

 

Advertising agencies and business management services, in International Class 35.

 

Printing and typesetting, in International Class 40.

 

Photography; and copywriting services, namely, custom writing services for other, in International Class 41. 

 

Commercial art design and packaging design for others; computer programming for others, application service provider (ASP) featuring software in the field of database accessing; computer services, namely, designing and implementing Internet web pages for others; and creating and maintaining web sites for others, in International Class 42. 

 

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.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Combined Application

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the services in each class and list the 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(b); 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.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services, particularly for International Class 40, based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

Trademark 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. §1052(d).  TMEP §704.02.

 

 

 

 

 

 

 

/Cynthia Sloan/

Examining Attorney

Law Office 116

Ph 703.306.7921

Fx 703.746.8116

ecom116@uspto.gov

http://www.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

 

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