UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/547154
APPLICANT: Standard Parking Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: SETUP
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CORRESPONDENT’S REFERENCE/DOCKET NO: 201420.0435
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/547154
This letter responds to the applicant's communication filed on September 14, 2004.
The applicant has 1) proposed an amendment to the recitation of services, 2) submitted additional specimens of use, 3) responded to the general inquiry on the significance of the mark. Nos. 2 and 3 are acceptable. The proposed amendment to the recitation of services in Class 35 remains unacceptable. For the reasons below, the requirement to amend the recitation of services is maintained and made FINAL.
THIS REQUIREMENT APPLIES TO CLASS(ES) 35 ONLY.
The recitation of services remains unacceptable as indefinite because the precise nature of the services is unclear from the present wording. The applicant must amend the recitation to specify the common commercial name of the services. If there is no common commercial name for the services, the applicant must describe the services and indicate their nature. TMEP §1402.11.
Applicant must amend the identification of services to delete the term "sale(s)" that was submitted in the original application and to indicate with greater specificity the nature of the service, e.g., retail store services featuring access and revenue control equipment utilized in the parking industry, mail order services featuring access and revenue control equipment utilized in the parking industry, or on-line retail store services featuring access and revenue control equipment utilized in the parking industry. The term "sales" in the identification of services is unacceptable because selling is not considered a service that is rendered for the benefit of someone other than applicant. In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); TMEP §§1301.01 et seq.
The applicant may adopt the following recitation, if accurate:
Class 35
Retail __________ services [applicant must specify type of retail services using common commercial terms, e.g., retail store services, on-line retail store services] featuring access and revenue control equipment utilized in the parking industry, in International Class 35.
TMEP section 1402.11.
Applicant may wish to refer to the on-line identification manual on the PTO homepage for acceptable names of goods and services. The web page address is:
http://www.gov.uspto.report/web/office/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. §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.
Accordingly, for the reasons stated above, the requirement to amend the recitation of services is continued and made FINAL.
FAILURE TO RESPOND – Abandonment of Classes Advisory
If applicant should fail to respond to this Office action within the six month time limit, then Class(es) 35 will be deleted from the application and the application will proceed forward for Class(es) 37, 39, and 42 only. 37 C.F.R. §2.65(a).
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
Applicant may respond to this Office action 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 processing time and eliminates the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to Office actions. Applicants using TEAS should not submit a duplicate paper copy of the response.
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. The TARR database is available 24 hours a day, 7 days a week. Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday.
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov.
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on October 18, 2004. To reach me by phone after that date call (571) 272-9195.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9116.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Sharon A. Meier/
_________________________________
Sharon A. Meier
Trademark Attorney, Law Office 116
703-306-7927
703-746-8116 - fax
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.