Priority Action

RESPONSE TIME LIMIT: To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date. If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. TMEP §708.01.

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

QUESTIONS: Please contact the assigned trademark examining attorney with any questions.

Serial Number 76/547302

The following were discussed in communication with Simor L. Moskowitz on April 6, 2006. Applicant must respond to each refusal and/or requirement raised below.

THIS REQUIREMENT APPLIES TO CLASS 42 ONLY.

Unacceptable Identification of Services

As discussed, there are two problems regarding the Class 42 identification of services. The first is that the information provided via an electronic database is classified according to the type of information provided. As such, the applicant must specify the type of calcium and calcified tissue information provided. If the information relates to “scientific research” in the field of calcium and calcified tissue, it is properly classified in Class 42; however, if the information pertains to “medical” information in the field of calcium and calcified tissue, then the proper classification is Class 44. The second issue is that the “search and retrieval services” must be further clarified to indicate that the applicant is not providing search engine services, as shown below. Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include and goods or services that are not within the scope of the services set forth in the present identification. Please see the examining attorney’s recommendations below shown in underlined wording. Applicant may substitute the following wording, if accurate:

Providing scientific research information in the field of calcium and calcified tissue via an electronic database containing citations and abstracts of literature; providing specific information as requested by customers via the Internet, namely, on-line information search and retrieval services in the field of calcium and calcified tissue in International Class 42; and/or

Providing medical information in the field of calcium and calcified tissue via an electronic database containing citations and abstracts of literature in International Class 44.

TMEP §§1402.01 and 1402.03.

Multiple Class Application Requirements

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

(3) For each additional class of goods and/or services, applicant must submit:

(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

Please note that the specimens of record are acceptable for all classes suggested above.

Failure to Respond – Abandonment of Class 42 Services

If applicant should fail to respond to this Office action within the six month time limit, then the Class 42 services will be deleted from the application. The application will then proceed forward for the Class 16 services only. 37 C.F.R. §2.65(a).

/Elizabeth Pignatello/

Trademark Examining Attorney

Law Office 104

Phone: 571-272-9308

Fax: 571-273-9308

HOW TO RESPOND TO THIS OFFICE ACTION:

· ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail. THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.

· REGULAR MAIL RESPONSE: To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name. NOTE: The filing date of the response will be the date of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm