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  76/546356

 

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

 

NO CONFLICTING MARKS

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. §1052(d).  TMEP §704.02.

 

DRAWING

The drawing is not acceptable because it will not reproduce satisfactorily because it contains electronic noise.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

Please note:  An applicant cannot amend the drawing of the mark if the change materially alters the mark.  TMEP §807.14(a).  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.  37 C.F.R. §2.72.  TMEP §807.14(a)(i). 

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The Office will only accept an image in .jpg format.  The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.  37 C.F.R. §2.53.

 

IDENTIFICATION OF GOODS

The identification of goods is unacceptable as indefinite because the nature of the goods is unclear.  The goods appear to be computer programs.  The applicant must indicate not only that the goods are computer programs but also the purpose or function of the program.  TMEP §1402.03(d).  In this case, the applicant has specified very broad fields of use of the computer software like telecommunication, but has not specified the function, i.e. what the software does.  This additional information is necessary to permit this Office to reach judgments concerning possible conflicts between the applicant’s mark and other marks.  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:  TMEP section 804.

 

Class 9:               Computer hardware and computer software, namely, computer telephony software; computer software for use in the cable and broadcasting industries for advertising purposes, namely, (specify function of software, e.g. Computer software to enhance the audio-visual capabilities of multimedia applications for the integration of text, audio, graphics, still images and moving pictures); computer software for use in delivering and receiving video on demand and near video on demand services; computer software for home shopping, namely, computer e-commerce software to allow users to perform electronic business transactions via a global computer network

 

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 goods that are not within the scope of goods set forth in the present identification.

 

In addition, the applicant may want to consult The Acceptable Identification of Goods and Services Manual, published by the U.S. Patent and Trademark Office which is available on-line at www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  As set forth in the TMEP, this manual "sets out acceptable language for identifying goods and services of various types."  TMEP sec. 1402.04.

MULTIPLE CLASS APPLICATION

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/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(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.

 

MEANING

The applicant must indicate whether the wording “SEACHANGE” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

RESPONSE TO OFFICE ACTION

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.

 

Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to office actions. 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax.  TMEP 306.04; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

/Jennifer Martin/

Examining Attorney L.O. 116

(703) 306-7925; (703) 746-8116 (fax)

Jennifer.Martin@uspto.gov

 

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.