Offc Action Outgoing

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  76/533259

 

The following is in response to the communication received on July 13, 2004 in the form of a petition for reinstatement of the application.  For the reasons stated below, the requirement that applicant amend the identification/recitation and classification of goods and services is hereby continued and made FINAL.  The corresponding requirement that applicant pay any additional fees necessitated by this amendment is also hereby continued and made FINAL.

 

A.                Identification/Recitation and Classification of Goods and Services

 

The identification of goods/recitation of services is unacceptable as indefinite because the examining attorney is unable to determine the exact nature of some of the goods and services.  TMEP section 804; TMEP section 1301.05.  Further, applicant has misclassified some of the goods and/or services.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.  For the applicant’s convenience, the examining attorney has copied the identification/recitation in its entirety below.  The necessary changes to the identification/recitation and classification are discussed in bold  font text in brackets next to the corresponding item in the present identification/recitation.

 

            INTERNATIONAL CLASS 16:

 

Providing resources to education stakeholders in the K-12 education community, namely printed and electronic publications concerning issues relevant to education [Applicant must specify the nature of the publications, e.g., magazines.  With respect to the electronic publications, applicant must state whether these are downloadable, in International Class 9, non-downloadable, in International Class 41, or both.  Applicant must reclassify these electronic publications appropriately].

 

            INTERNATIONAL CLASS 41:

 

Conducting research projects, studies and professional development workshops and programs regarding education issues relevant to the K-12 education community [The recitation of these services is acceptable as presently written.].

 

The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order.  37 C.F.R. Section 2.74(b).  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 listed in the present identification.

 

B.                 Additional Fees May Be Required

 

As discussed above, the application identifies goods and services that may be classified in three international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01. 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

                                                                        Regards,

 

 

Scott M. Oslick

Trademark Examining Attorney

Law Office 108

(571) 272-9348

(571) 273-9108 (Fax for Official Responses Only)

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.