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  76/552209

 

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

 

Search Result

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.

Identification of Services

 

Applicant must clarify the identification of services by specifying the nature of some of the services.  “Computer programming for others, namely, online data backup and retrieval services” is unclear because the online data backup and retrieval services appear to be separate services from the programming services.  The applicant may delete “computer programming for others” or specify that the programming is with respect to “online data backup and retrieval” functions.  The applicant encompasses services potentially classified in more than one class.

 

The applicant may adopt the following identification, if accurate:

 

Computer programming for others, namely, programming customers’ servers for online backup and retrieval of their data; computer consulting services, namely, computer disaster recovery planning, and custom software programming for others; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others, in international class 42;

 

Computer security testing, namely, monitoring computer systems for security purposes, in international class 45.

 

TMEP §1402.01.

 

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.

Classification

 

If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Classes 42 and 45.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

Applicant must adopt the appropriate international classification number for the goods and services identified in the application.  The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services.  37 C.F.R. §6.1; TMEP §§1401 et seq.

Combined Application

 

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. TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

Partial Refusal as to Specific Goods/Services—Abandonment Advisory

 

If applicant should fail to respond to this Office action within the six month time limit, then all services will be DELETED from the application EXCEPT:  Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others.

 

 

 

/Alex S. Keam/

Attorney

Law Office 114

Phone: (703) 308-9114 ext. 140

Fax for Responses: (703) 746-8114

 

 

 

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.