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  76/539025

 

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

 

NO LIKELIHOOD OF CONFUSION

 

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. Section 1052(d).  TMEP section 704.01.

 

AMENDED RECITATION OF SERVICES REQUIRED

 

The recitation of services is too broad because it could include services classified in other classes.   For instance, the installation of computer software is classified in International Class 42.  However, the installation of computer networks or systems is classified in International Class 37.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11. 

 

The applicant may wish to consult the Trademark Acceptable Identification of Goods and Services Manual, which is available on the Internet at www.gov.uspto.report/web/offices/tac/doc/gsmanual/, for guidance in drafting an acceptable recitation of services.

 

The applicant may adopt the following recitation of services in International Class 37, if accurate:

 

Installation of computer networks provided for a fee to customers who purchase computer hardware.

 

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.

 

CLASSIFICATION

 

If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 37.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.  The services are currently classified in International Class 42.

 

REQUIREMENTS FOR A 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.  The fee for filing a trademark application is $335 for each class.

 

(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 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).

 

APPLICANT’S ENTITY TYPE

 

The applicant must indicate what type of entity is applying, for example, an individual, partnership, corporation or joint venture.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP section 802.03.

 

If the applicant is a corporation, the applicant must indicate its state of incorporation.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP sections 802.03(c) and 802.04.

 

If the applicant is a partnership, the applicant must specify the names and the national citizenship or the state or country of organization or incorporation of the general partners.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP sections 802.03(b) and 802.04. The applicant must also indicate the state under whose laws the partnership is organized.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP sections 802.03(b) and 802.04.

 

RESPONSE GUIDELINES

 

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.

 

If the applicant’s has questions regarding the status of the application, the Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  Please note that an application serial number or registration number is needed to be able to access this database.  TARR is available 24 hours a day, 7 days a week.

 

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

 

 

 

/Verna Beth Ririe/

Trademark Attorney

Law Office 105

(703) 308-9105 ext. 176

(703) 872-9825 (office fax)

 

 

 

 

 

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.

 

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.