Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 10/24/2009

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

 

On August 10, 2004, action on this application was suspended pending the disposition of Application Serial Nos. 78317776 and 78317782.  The referenced pending applications have abandoned and are no longer a bar to the registration of applicant’s mark.

 

 

CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS

Applicant has claimed ownership of U.S. Reg. Nos. 1466551, 1485441 and 2712375.

 

Applicant’s claim of ownership of U.S. Registration No. 1485441 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled/expired, as shown on the attached copy from Office records.  Only claims of ownership of active registrations are printed.  See 37 C.F.R. §2.36; TMEP §812.

 

If accurate, applicant may amend its claim of ownership of prior registrations to the following:

 

Applicant is the owner of U.S. Reg. Nos. 1466551, 2712375, and others.

 

 

IDENTIFICATION - REQUIREMENTS

Certain wording in the identification, as amended, must be further amended for the reasons indicated below. See TMEP §§1402.01, 1402.03. Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(c).

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

 

In Class 35, the wording “clerical services” appears twice – once immediately after the wording “career placement” and again immediately after the wording “preparing business reports.”  Applicant must delete duplicative wording.

 

 

In Class 35, the wording “print and electronic information in the fields of personnel placement and employee recruitment by mail, telephone and other channels,” is unacceptable and must be amended because it is not clear. See TMEP §§1402.01, 1402.03.  If the applicant provides print materials, such materials are classified in Class 16.  If accurate, applicant may amend this wording to Class 35 -- “providing information in the fields of personnel placement and employee recruitment by mail, telephone and other channels.” 

 

 

In Class 35, the wording “project management in the telecommunications field,” is unacceptable and must be amended because it is not sufficiently definite and because it could include services in more than one class.  See TMEP §§1402.01, 1402.03.  If accurate, applicant may amend this wording to Class 35 - “business project management in the telecommunications field” or to Class 42 – “computer project management in the telecommunications field.”

 

 

In Class 35, the wording “computer services, namely, providing databases in the field of staffing” is unacceptable because it is indefinite and must be amended. See TMEP §§1402.01, 1402.03.  If accurate, applicant may amend this wording to “computer services, namely, providing databases in the field of staff hiring.”

 

 

In Class 36, the wording “price quotations” is unacceptable because it is indefinite and may be classified in more than one class.  See TMEP §§1402.01, 1402.03.  If accurate, applicant may amend this wording to Class 35 – “Goods or services price quotations” or Class 36 - “Stock exchange price quotations” or Class 36 – “Quotation of stock market prices.”

 

 

In Class 42, the wording “technical support, namely, monitoring of computized network systems,” is unacceptable and must be amended because it is not clear.  If accurate, applicant may amend this wording to “technical support, namely, monitoring of computerized network systems.”

 

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  37 C.F.R. §2.85(e)(1); TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.  37 C.F.R. §2.85(e)(2).

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

 

SPECIMEN OF USE FOR CLASS 44 SERVICES – REQUIREMENTS

Applicant added Class 44 to the application and asserted a basis under Section 1(a) for that class.  The application does not include the required specimen showing use of the applied-for mark in commerce for the goods and/or services in Class 44.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Therefore, applicant must submit the following:

 

(1)  A specimen showing use of the mark in commerce in connection with the services in Class 44 (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; AND

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

 

Pending receipt of a proper response, registration is refused because applicant has not provided evidence of the applied-for mark in use in commerce as a trademark and/or service mark for services in Class 44.  Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Applicant may respond to the stated specimen refusal by submitting a verified specimen or amending the application to an intent to use filing basis under Trademark Act Section 1(b) by following the suggested directions below for responding either online or by mail. 

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a substitute specimen as follows:  (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; and (3) select the statement that “The submitted specimen(s) was in use in commerce at least as early as the filing date of the application.”  However, if applicant is responding by amending the application to a Section 1(b) filing basis, applicant should do the following:  (1) answer “yes” to the TEAS response form wizard question to “change filing basis;” (2) uncheck the box for “Filing Basis Section 1(a);” and (3) check the box for “Filing Basis Section 1(b).”  Please note that these steps appear on different pages of the TEAS response form. 

 

Whether submitting a specimen or amending the filing basis to Section 1(b), applicant must also manually enter his/her electronic signature and date after the declaration at the end of the TEAS response form.  See TMEP §§611.01(c), 804.01(b). 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, or changing the filing basis, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified substitute specimen by checking the first statement below, personally signing and dating the declaration appearing below the statement, and submitting a specimen showing the applied-for mark in use in commerce.  See 37 C.F.R. §2.20; TMEP §§804.01(b), 904.05.  If applicant is responding by amending the application to a Section 1(b) filing basis, applicant may check the second statement below, and personally sign and date the declaration appearing below the statement.  See 37 C.F.R. §2.20; TMEP §§804.01(b), 806.03(c).

 

q         The submitted specimen was in use in commerce at least as early as the filing date of the application.

 

q         Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

/Mary Rossman/, Trademark Attorney

Law Office 109

Phone: 571 272 9213

Fax (for official responses ONLY): 571 273 9109

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 76545647) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 10/24/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76545647&doc_type=OOA&mail_date=20091024 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 10/24/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.