Offc Action Outgoing

RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

Serial Number 76/559479

This letter responds to the applicant’s communication filed on April 6, 2005.

The applicant has been amended to seek registration on the Supplemental Register. In view thereof, the applicant should note the following new refusal.

REFUSAL TO REGISTER-MARK IS GENERIC

Registration is refused on the Supplemental Register because the proposed mark is generic for applicant’s services. Trademark Act Section 23(c), 15 U.S.C. §1091(c); See In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture and jewelry); Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for architectural design of buildings and retail outlets selling kits for building log homes); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) (WEB COMMUNICATIONS generic for consulting services to businesses seeking to establish sites on a global computer network); In re Mortgage Bankers Association of America, 226 USPQ 954 (TTAB 1985) (CERTIFIED MORTGAGE BANKER (“MORTGAGE BANKER” disclaimed) for “educational services, namely providing qualifying examinations, testing and grading in the field of real estate finance” held so highly descriptive as to be incapable of functioning as a mark notwithstanding evidence of acquired distinctiveness); TMEP §§1209.01(c) et seq.

A two-part test is used to determine whether a designation is generic:

(1) What is the class or genus of goods or services at issue?

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

A combination of generic terms may result in a unitary designation that is registrable if the juxtaposition of terms is incongruous or evokes a unique commercial impression. However, if the combination of two or more generic terms is such that each term retains its generic significance, then the combined expression is generic and thus incapable of denoting source. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE). See also Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F. Supp. 1270, 218 USPQ 71 (S.D.N.Y. 1983) (AIR SHUTTLE); Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 196 USPQ 121 (D. Oregon 1976), aff'd 202 USPQ 401 (9th Cir. 1979) (SURGICENTER); In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994) (POCKET SURVIVAL TOOL); In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) (COMPUTER SONAR); Turtle Wax Inc. v. Blue Coral Inc., 2 USPQ2d 1534 (TTAB 1987) (WASH WAX); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE).

In this case, the applicant seeks to register MOBILEACCESS NETWORKS for “design for others of wireless fiber optic radio frequency communication solutions and wireless telecommunications products for the distribution of radio frequency, namely, telecommunications, telephone and wireless signal converters and point to multi-point fiber optic and wireless signal distributors.”

In the previous Office actions, the examining attorney attached evidence from the Internet showing use of MOBILE ACCESS NETWORKS in the telecommunications industry to identify a particular type of network. Attached to this Office action is additional evidence from the Lexis/Nexis research database showing use of mobile access networks to identify a particular type of network. The mark is generic because it immediately identifies the type of networks that the applicant designs. Therefore, the mark is incapable of functioning as an indicator of source.

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

Specimen

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the mark in the sale or advertising of the identified services. TMEP §904.05. The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §§2.56 and 2.88(b)(2). Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §1301.04. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 37 C.F.R. §2.59(b); TMEP §904.09.

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.

Requirement for Advertising

The applicant must submit samples of advertising or promotional materials to permit proper consideration of the application. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d). In addition, the applicant must answer the following questions:

What is the readily understood meaning of MOBILE ACCESS NETWORK?
Is the term MOBILE ACCESS NETWORK used to identify a particular type of network?
Is the wording MOBILE ACCESS NETWORK used to identify a wireless enterprise network?
Do MOBILE ACCESS NETWORKS provide users with the ability to access a network while mobile?
What is the difference between a FIXED NETWORK and a MOBILE ACCESS NETWORK?
Is the wording MOBILE ACCESS NETWORK used by others in the telecommunication industry, and if so, what is it used to mean?
What other terms are used in the industry to identify MOBILE ACCESS NETWORKS? In other words, if the applicant’s statement about competitor need is correct, what else would a MOBILE ACCESS NETWORK be called? How would competitors convey the unique features of their mobile access networks without using that wording?

The applicant must answer each and every question specifically.

NOTICE: FEE CHANGE

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or

(2) $375 per international class if filed on paper

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

The new fee requirements will apply to any fees filed on or after January 31, 2005.

NOTICE: TRADEMARK OPERATION RELOCATION

The Trademark Operation has relocated to Alexandria, Virginia. 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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

/Patty Evanko/

Trademark Attorney

Law Office 112

571-272-9404

patty.evanko@uspto.gov (questions only)

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
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 in your response.

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

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.

108B8C

Print Request: Selected Document(s): 2,5,6,7,11,13,15,21

Time of Request: May 09, 2005 05:34 PM EDT

Number of Lines: 178

Job Number: 1841:43894018

Client ID/Project Name:

Research Information:

News, Most Recent Two Years (English, Full Text)

("mobile access networks")

Send to: EVANKO, PATTY

TRADEMARK LAW LIBRARY

2101 CRYSTAL PLAZA ARC

MAILBOX 314

ARLINGTON, VA 22202-4600

2 of 21 DOCUMENTS

Digital Media Asia

April 1, 2005

LENGTH: 262 words

HEADLINE: C-DOT, Alcatel to establish broadband wireless global research centre

BODY:

...IEEE 802.16e standard and its evolutions.

While the presently available Wi-fi technology mainly caters to short distance hot spots, the WiMAX technology can reportedly be deployed both in the wireless backbone and the mobile access networks. Apart from the development of latest wireless technologies, the partnership also envisages industrialisation and volume production of the WiMAX solutions in India.

The agreement will also push forward government of India s plan of bringing the advantages of broadband ...

5 of 21 DOCUMENTS

PR Newswire US

February 15, 2005 Tuesday

LENGTH: 994 words

HEADLINE: Telecom Italia Lab and STMicroelectronics Demonstrate First Prototype of Open Mobile Platform at 3GSM World Congress;

ST's Nomadik STn8800 application processor running Linux hosts a Telecom Italia Lab exploration of next-generation services

DATELINE: GENEVA and TURIN, Italy Feb. 15

BODY:

...Telecom Italia Lab took part in the definition and consolidation of the GSM standard, MP3 and optical transmission. Today it goes on creating innovation through direct experience in the planning of fixed and mobile access networks, supporting the evolution of the transport network, developing platforms and services, prototyping next generation terminals. Its main research areas are: the evolution of mobile communication, from third generation mobile systems to a variety of overlapping wireless ...

6 of 21 DOCUMENTS

World Markets Analysis

February 15, 2005

SECTION: TOP STORY

LENGTH: 913 words

HEADLINE: Verizon Wins Battle for MCI

BYLINE: Julian Watson

BODY:

...sees in its acquisition of AT&T), but should be understood in the context of MCI's (and AT&T's) financial performance. Both have extensive US and global IP network assets to complement SBC and Verizon's fixed and mobile access networks, but both have experienced revenue erosion due to intense competition in the long-distance and data markets, subdued demand (particularly in 2001-2003) and a failure to exploit the rapid growth in ...

7 of 21 DOCUMENTS

M2 Presswire

February 2, 2005

LENGTH: 583 words

HEADLINE: RFI Global Services Ltd: RFI Global Services Ltd predicts an increase of more than one third in the time required to achieve compliance for handset manufacturers rolling out 3G applications

BODY:

...revenues through local WLAN and Bluetooth cordless technology.

Richard Jacklin, Head of RFI Cellular commented, "Key test and performance issues will include interoperability, roaming and handover between cellular and the Unlicensed Mobile Access Network, requiring test and approval companies to offer both cordless and cellular test services."

RFI also forecasts a continued shift toward outsourcing mobile phone terminal design and production to Original Design Manufacturers ( ...

11 of 21 DOCUMENTS

Network Operators Worldwide

Telecommunications

November 8, 2004

LENGTH: 4330 words

HEADLINE: Telecom Corporation of New Zealand (TCNZ) - Networks

DATELINE: New Zealand

BODY:

...s primary vendor, it was thought that NEC would continue to have a major role in supporting the current generation of fixed-line networks and TCNZ's migration to next-generation technology. Furthermore, the future provision of mobile access network technology and customer premises equipment (CPE) was not thought to be included in the deal with Alcatel.

TCNZ began trials of SDH transmission systems during 1992, and in June 1993, Philips Kommunikations Industrie was ...

13 of 21 DOCUMENTS

ABI/INFORM

International Journal of Physical Distribution & Logistics Management

October 20, 2004

SECTION: Vol. 34, No. 9; Pg. 749; ISSN: 0960-0035

LENGTH: 7290 words

HEADLINE: Minimizing logistics risk through real-time vehicle routing and mobile technologies: Research to date and future trends

BYLINE: Giaglis, G M; Minis, I; Tatarakis, A; Zeimpekis, V

BODY:

...appropriately addressed.

In the implementation area, it appears that there exist mature technologies to sufficiently address the requirements of the real-time vehicle management system. In terms of the communication subsystem, GPRS and TETRA are appropriate mobile access networks, while GPS technologies meet all the related positioning requirements. For the front-end system, tablet PCs have significant potential, since both their interface capability and the computational power support efficient user ...

15 of 21 DOCUMENTS

Global News Wire - Asia Africa Intelligence Wire

Panafrican News Agency (PANA) Daily Newswire

May 21, 2004

FT-ACC-NO: A200405232D5-82A3-GNW

LENGTH: 308 words

HEADLINE: MOBILE GROWTH IN AFRICA ROOTS IN FIXED LINE SERVICES

BODY:

...earmarked for telephony service introduction or extensions in African countries will be for GSM type communications. However, these call for a strong core and edge telecommunications infrastructure to support the growth in mobile access networks," he explained.

The growth in mobile services leads to capacity constraints in backhauling of base stations to core switching network that typically is done through deploying either fixed line fibre-optic or radio ...

21 of 21 DOCUMENTS

Communications Daily

June 3, 2003, Tuesday

SECTION: TODAY'S NEWS

LENGTH: 782 words

HEADLINE: SUPERCOMM IS TOLD VoIP IS EMERGING AS DOMINANT FORCE

BODY:

...economics of VoIP are so good." He cited, for example, the distance insensitivity of VoIP infrastructure, and the fact that VoIP was "highly resilient in a catastrophe."

Telcos will face increasing competition, including from new mobile access networks, said Hugh Bradlow, CTO of Australia's Telstra, but he said traditional telcos still had the advantages of engineering strength, existing customer relationships and service management strengths. Telstra, for example, is offering single ...

108B8C

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Time of Request: May 09, 2005 05:34 PM EDT

Print Number: 1841:43894018

Number of Lines: 178

Number of Pages: