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  76/545647

 

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

 

Prior Pending Applications

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 78317776 and 78317782.  The effective filing date (i.e., the priority date) of the referenced applications precedes the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced applications mature into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

Recitation and Classification of Services

 

The recitation of services is unacceptable for the following reasons.

CLASS 35

 

“Payrolling services for others” is indefinite.  The applicant may amend to “payroll preparation for others.”

 

PLEASE NOTE, “administration of employee benefit plans” belongs in CLASS 36.

 

“Help desks” is indefinite.  The applicant must specify the field, e.g., providing help desk support for small and medium-sized businesses.  PLEASE NOTE, help desk services belong in CLASS 42.

 

The applicant must identify the subject of the “print and electronic information”; the subject matter determines the correct classification.  For example, print and electronic information in the field of personnel placement and employee recruitment belongs in CLASS 35.

 

The applicant must more precisely identify its “network management” services.  The classification will be determined by the nature of the services, e.g., computer network management for others belongs in CLASS 42.

 

CLASS 36

 

The applicant must identify the nature of the price quotations, e.g., stock price quotations (CLASS 36), price quotations for goods and services of others (CLASS 35).

 

CLASS 38

 

Acceptable as written.

 

CLASS 39

 

Acceptable as written.

 

CLASS 40

 

Acceptable as written.

 

CLASS 41

 

The applicant must specify the field or subject matter of the “classes, seminars and workshops” it conducts and arranges.

 

With respect to “developing educational manuals for others,” the applicant must specify the field or subject matter of the manuals.

 

The applicant must more precisely identify “online skills evaluation and training.”  If the services are actually “online testing to determine employment skills,” they belong in CLASS 35.

 

The applicant must more precisely identify “educational training in the assembly.”  It is unclear what that means.

 

CLASS 42

 

“Providing information on staffing at the specific request of end-users” is unclear; an acceptable alternative is “providing customized information in the field of staffing at the specific request of end-users . . . .”

 

“Computer services, namely, providing databases featuring staffing information” is indefinite.  The applicant must more precisely identify the nature of the staffing information, e.g., staff hiring.  PLEASE NOTE, such services belong in CLASS 35.

 

PLEASE NOTE, the following are incorrectly classified; the correct classification appears in parentheses next to the services.

 

• Pre-employment background screening (CLASS 45)
• Data conversion of computer program data or information from visual media to CD-ROM and other digital formats (CLASS 40)
• Written text editing (CLASS 41)
• Providing health information health information on drug testing (CLASS 44)
• Providing health care information (CLASS 44)
• Testing to determine employment skills (CLASS 35)

 

The following services are repeated twice in the recitation:  “on line batch computer services” and “database development services.”  Please delete any redundancy.

 

CLASS 45

 

PLEASE NOTE, “technical support, namely, monitoring of network systems” belongs in CLASS 42.

 

The applicant may adopt the following, if accurate.  Suggested additions are in capital letters, and deletions are in parentheses.

 

            CLASS 35 – Account auditing; accounting services; accounts receivable services; administration of business payroll and (payrolling services) PAYROLL PREPARATION FOR OTHERS for others; (administration of employee benefit plans for others); bookkeeping; business auditing; business consultation; business information in the fields of personnel and staffing; business information management in the fields of personnel and staffing; business management; business management supervision; providing business management information on a wide variety of topics to services providing professionals; business invoicing services; business marketing consulting services; business management consultation; business management of projects; business planning; business process re-engineering services; business research, market research and surveys; career placement; clerical services; providing commercial information in the fields of personnel and staffing; computerized accounting services; computerized database management; cost accounting; cost assessment services in the field of staffing; cost/price analysis; data processing services; employment agency services; employment counseling and recruiting; employment hiring, recruiting, placement, staffing and career networking services; employment verification; employment outsourcing services, and other contingent staffing services; estimating contracting work; executive search and placement services; job placement; management of telephone call centers for others; on-line ordering services in the field of staffing; operating on-line marketplaces for sellers of goods and/or services; operation of a telephone switchboard for others; operation of telephone call centers (and help desks) for others; operation of telephone communication centers for others; organizing and conducting job fairs; organizing exhibitions in the personnel and staffing fields; outsourcing in the field of staffing; payroll preparation; personnel management consultation; personnel management; personnel placement and recruitment; production demonstration; promoting the goods and services of others by providing a web site at which users can link to classified advertising of job openings at client companies; providing career information via the internet; psychological testing for the selection of personnel; resume preparation; retail services by direct solicitation by sales agents in the field of staffing; secretarial and clerical services; telephone operator and receptionist services; telephone order-taking services for others; utilization and review in the staffing field; work analysis to determine worker skill sets and other worker requirements; human resource procurement services; temporary employment agency services; temporary personnel placement services; temporary and permanent technical personnel placement services; personnel recruitment and placement services; temporary help services; temporary and permanent placement services; placing and preparing advertisements for others; direct mail advertising; cooperative advertising and marketing; dissemination of advertising for others via the internet; developing promotional campaigns for businesses; promoting the goods and services of others by preparing and placing advertisements in electronic publications accessed via the internet; preparing business reports; clerical services; computerized word processing services; providing trade information; print and electronic information IN THE FIELD OF PERSONNEL PLACEMENT AND EMPLOYEE RECRUITMENT by mail, telephone and other channels; mail sorting, handling and receiving; document reproduction; telemarketing; telephone answering services; conducting employee incentive award programs to promote on the job safety, quality, productivity and attendance; employment counseling and recruiting; job placement; temporary help and employment services, namely, providing employees to communications companies on an hourly, per diem or contract basis; project and (network) management in the telecommunications field; price quotations FOR GOODS AND SERVICES OF OTHERS; online TESTING TO DETERMINE EMPLOYMENT skills; providing databases featuring staff HIRING information; testing to determine employment skills.

 

            CLASS 36 – Evaluation of credit bureau data; financial information processing; financial management; insurance administration; leasing of office spaces; leasing of real estate; organizing preferred provider programs in the field of staffing; STOCK price quotations; payroll tax debiting services; electronic funds transfer; electronic payment, namely, electronic processing and transmission of bill payment data; administration of employee benefit plans for others.

 

            CLASS 38 – Delivery of messages by electronic transmission; electronic data interchange (EDI) services; electronic store-and-forward messaging; electronic transmission of data and documents via computer terminals and the internet; electronic voice messaging, namely, the recording and subsequent transmission of voice messages by telephone; electronic, electric, and digital transmission of voice, data, images, signals, and messages; online document delivery via the internet; electronic transmission of data and documents via computer terminals; outcall notification services.

 

            CLASS 39 – Document delivery; storage of electronic media, namely, images, text and audio data; storage services for archiving databases, images and other electronic data; electronic storage of data.

 

            CLASS 40 – Desktop publishing for others; document data transfer and physical conversion services from one media to another; media duplication of data and digital information onto cd-roms and other digital media and digital storage devices; records automation, namely, electronic digitizing of printed records into a computer readable medium; data conversion of computer program data or information from visual media to CD-ROM and other digital formats.

 

            CLASS 41 – Preparing, administering, and scoring standardized tests; analyzing educational tests scores and data for others; arranging and conducting educational conferences; ARRANGING AND CONDUCTING classes, seminars and workshops IN THE FIELD OF ________; career counseling; computer education training services; custom writing services; developing educational manuals for others IN THE FIELD OF ________; education services, namely, providing tutorial sessions in the field of word processing; (online skills evaluation and training); educational testing; personal coaching services in the field of resume writing and job interviewing skills; providing on-line information and news in the field of employment training; publication of brochures; publication of leaflets; publication of training manuals; training in the use and operation of machinery, computers and data processing equipment; training services in the field of word processing and electronic assembly; educational training in the assembly OF _______ (STATE WHAT IS ASSEMBLED); written text editing.

 

            CLASS 42 – Computer network and software design for others; computer programming for others; computer project management services; computer services, namely, providing search engines for obtaining data on the internet; computer services, namely, creating indexes of information, sites and other resources available on the internet; computer software development; computer systems analysis; data warehousing; database development services; design and testing for new product development; design and testing of new products for others; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; on-line batch computer services; product safety testing; providing CUSTOMIZED information (on) IN THE FIELD OF staffing at the specific request of end-users by means of telephone or the internet; recovery of computer data; repair of computer software; technical consultation and research in the field of fields of computer software/firmware, engineering, information technology, and science; technical supervision and inspection in the field of product quality control; technical support services, namely, troubleshooting of computer hardware, networks and software problems; technical writing for others; testing, analysis and evaluation of the goods and services of others for the purpose of certification; computer services, namely, (providing databases featuring staffing information); (pre-employment background screening); commercial art design; graphic art design; (on line batch computer services); computer systems analysis; (database development services); (data conversion of computer program data or information from visual media to CD-ROM and other digital formats); (written text editing); (providing health information on drug testing; providing health care information); (testing to determine employment skills); design services for others in the field of communications networks and systems; computer aided design drafting; quality assurance services for others in the communications field; engineering services for others; engineering, design, and drafting services for others in the communications field; help desk SUPPORT FOR SMALL AND MEDIUM-SIZED BUSINESSES; COMPUTER NETWORK MANAGEMENT FOR OTHERS; technical support, namely, monitoring of network systems.

 

            CLASS 44 – providing health information on drug testing; providing health care information.

 

            CLASS 45 – (technical support, namely, monitoring of network systems); Pre-employment background screening.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

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

 

Additional Filing Fees

 

If the applicant adds additional classes (e.g., CLASS 44) to this application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods and services by international class with the classes listed in ascending numerical order (see above format).  TMEP section 1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP section 1403.01. 

 

The applicant has paid the filing fee for 8 classes. 

 

Disclaimer

 

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive of the goods or services.  Moreover, a component of a mark that is generic is likewise barred from registration.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. 

 

The term SERVICES GROUP is merely descriptive of the identified services because it describes a feature of the services and the entity.  The examining attorney refers to the excerpted articles from The American Heritage Dictionary of the English Language.  See attached.  Accordingly, the applicant must insert a disclaimer of SERVICES GROUP in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use SERVICES GROUP apart from the mark as shown.

 

Ownership of Registered Marks

 

If the applicant is the owner of Registration Nos. 1466551, 1485441, 2712375 and others, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36.

 

 

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

 

 

/Gwen P. Stokols/

Trademark Examining Attorney

Law Office 102

 

Telephone:  703-308-9102, x. 275

Fax:  703-746-8102

 

 

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.

 

serv·ice

 
serv·ice (sûr¹vîs) noun

Abbr. serv., svc

1.    a. Employment in duties or work for another, especially for a government. b. A government branch or department and its employees: the diplomatic service.

2.    a. The armed forces of a nation. b. A branch of the armed forces of a nation.

3.    a. Work or duties performed for a superior. b. The occupation or duties of a servant.

4.    a. Work done for others as an occupation or a business: provides full catering service. b. A department or branch of a hospital staff that provides specified patient care: the anesthesiology service; the chest service.

5.    Installation, maintenance, or repairs provided or guaranteed by a dealer or manufacturer.

6.    A facility providing the public with the use of something, such as water or transportation.

7.    a. Acts of devotion to God; witness. b. A religious rite.

8.    An act of assistance or benefit to another or others; a favor.

9.    a. The serving of food or the manner in which it is served. b. A set of dishes or utensils: a silver tea service.

10.  Sports. The act, manner, or right of serving in many court games; a serve.

11.  Copulation with a female.

12.  Law. The serving of a writ or summons.

13.  The material, such as cord, used in binding or wrapping rope.

 

 

group

 
group (gr¡p) noun

Abbr. gr.

1.    An assemblage of persons or objects gathered or located together; an aggregation: a group of dinner guests; a group of buildings near the road.

2.    Two or more figures that make up a unit or design, as in sculpture.

3.    A number of individuals or things considered together because of similarities: a small group of supporters across the country.

4.    Linguistics. A category of related languages that is less inclusive than a family.

5.    a. A military unit consisting of two or more battalions and a headquarters. b. A unit of two or more squadrons in the U.S. Air Force, smaller than a wing.

6.    A class or collection of related objects or entities, as:. a. Two or more atoms behaving or regarded as behaving as a single chemical unit. b. A column in the periodic table of the elements. c. A stratigraphic unit, especially a unit consisting of two or more formations deposited during a single geologic era.

7.                     Mathematics. A set with an associative binary operation under which the set is closed, which contains an identity element and an inverse for every element in the set.[1]