UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/519270 APPLICANT: SPACESAVER CORPORATION | *76519270* |
| CORRESPONDENT ADDRESS: MICHAEL L. NOVITSKI SPACESAVER CORPORATION C/O KRUEGER INTERNATIONAL, INC. 1220 BELLEVUE STREET GREEN BAY, WISCONSIN 54302 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 |
| MARK: POWERLINK | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 353.265 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 76/519270
The following confirms the telephone conversation of June 21, 2004 with Michael Novitski. If the applicant amends the application to comply with the requirements listed below within two months of the above mailing date, the examining attorney will give priority to the handling of the amended application. The six‑month final deadline for filing a response specified above remains in effect.
The Office has received the applicant’s additional information regarding the services. The applicant’s amended recitation of services is unacceptable. The requirement for an acceptable recitation of services is continued.
The application identifies services that may be classified in International Classes 35 and 37. 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).
The recitation of services is unacceptable as indefinite. The applicant may adopt the following recitation, if accurate:
On-line customer services in the field of office and institutional furniture and powered mobile file, storage and shelving systems, in International Class 35. TMEP §1402.11.
INTERNATIONAL CLASS 37
The recitation of services is unacceptable as indefinite. The applicant may adopt the following recitation, if accurate:
Providing links to the websites of others for troubleshooting servicing and maintaining office and institutional furniture and powered mobile file, storage and shelving systems, in International Class 37. TMEP §1402.11.
The activities of “on-line product usage tracking and troubleshooting services in the field of office and institutional furniture and powered mobile file, storage and shelving systems, for maintenance and service thereof” do not appear to be services and must be deleted from the present application.
The following criteria have evolved for determining what constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).
Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service. See TMEP §1301.01(b)(v). While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service because that activity is ancillary to and normally expected in the trade. See TMEP §1301.01(b)(ii). The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service. In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment).
In the present case, the activities of “on-line product usage tracking and troubleshooting” are necessary activities that are routinely conducted with the sale of the applicant’s goods and/or the performance of another service. It is common for businesses to assist customers and help them track and troubleshoot problems.
THE ID MANUAL
For the applicant’s assistance and convenience, the examining attorney notes that the Office maintains a web site containing the Acceptable Identification of Goods and Services Manual, located at www.uspto.gov/web/offices/tac/doc/gsmanual/search.html. The applicant should use the listings located in this database exactly as worded if possible. Please note that use by the applicant of parenthesis within an identification of the goods is unacceptable as indefinite. With regard to those listings in the Office’s database that include terms within parenthesis and/or brackets, the applicant must set forth the term(s) that specifically cover the applicant’s goods or services. As always, any identification of goods or recitation of services the applicant chooses to adopt should 1) accurately describe the applicant’s goods or services; 2) be placed in the correct class of goods or services; and 3) list only those goods or services within the scope of those included in the original application.
In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases. The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....” TMEP §§1402.03(a) and 1402.11.
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 services that are not within the scope of the services recited in the present identification.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must 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 services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); 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.
The requirement for an acceptable recitation of services is continued.
RESPONSE
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 applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The Patent and Trademark Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP). The “TMEP” refers to the Trademark Manual of Examining Procedure (3rd ed., Rev. 1, June, 2002), available on the United States Patent and Trademark Office web site at www.uspto.gov.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Glenn Clark/
Trademark Attorney
Law Office 115
(703) 308-9115 Ext. 121
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/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.