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  76/522413

 

The assigned trademark examining attorney has reviewed the referenced application filed on June 16, 2003, and has determined the following.

 

Recitation of Services

 

The wording “Monitoring and management services for commercial, residential and vehicular automation systems in the field of security, environmental control, heating and air conditioning, water use, power use and energy management, pay-per-use appliances and devices, access, fire detection and suppression” in the recitation of services is unacceptable as indefinite because the examining attorney does not understand the nature of the wording “monitoring and management services.”  The applicant must amend the recitation to specify the common commercial name of the services.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature. 

 

Additional information regarding the nature of the services is required to allow for proper identification and classification of the services.  TMEP §1402.11.

 

The wording “monitoring the computer systems of others for management, technical and analytic purposes” in the identification of goods is too broad because it could include items classified in other classes.  The applicant must amend the identification to list each item by its common commercial name.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

For example, the following services would belong within International Class 42: 

 

Monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities (Int. Cl. 42) or

 

Technical support, namely, monitoring of network systems (Int. Cl. 42)

 

Computer project management services (Int. Cl. 42)

 

Computer services, namely, managing web sites for others (Int. Cl. 42).

 

Computer systems analysis (Int. Cl. 42)

 

However, “Monitoring of computer systems for security purposes” are services that belong within International Class 45.

 

Additions Not Permitted

 

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 goods or services that are not within the scope of the goods or services recited in the present identification.

 

On-Line Identification Manual

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification.

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

 

Additional Fee May Be Required

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Disclaimer Requirement

 

The applicant must disclaim the descriptive wording "LNS" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because it is an acronym of the wording “Local Network Service” which describes a feature of the services.  See below from www.acronymfinder.com <http://www.acronymfinder.com>.  

 

        LNS        Local Network Service                                                                                                                              

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “LNS” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

Description of the Mark

 

The applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The statement may be in the following form:

                         The mark consists in part of a fanciful letter “E” design.

  

Claim of Ownership of Prior Registrations

 

If applicant is the owner of U.S. Registration Nos. 2469011 1535141, and 1536275, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2469011 1535141, 1536275, and others.

 

No Conflicting Marks Noted

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

__________________________

/Judy Grundy/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 296

(703) 746-8106 fax number

ecom106@uspto.gov (official responses)

judy.grundy@uspto.gov (non-responsive questions)

 

 

 

 

 

 

uspto

 

 

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.