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  76/561752

 

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

 

No Conflicting Marks Noted

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.

 

Prior Registrations

If the applicant is the owner of Registration Nos. 2756800, 2316488, 2148478, 2330487, and  2374112, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

Classification/Recitation of Service

Applicant classified the goods and/or services “maintenance of wireless communications systems,” “installation…of equipment for wireless voice and data networks,” and “providing training programs for technicians in the areas of system operations and troubleshooting” in International Class 42; however, the correct classification is International Classes 37 and 41, respectively.  Applicant must either delete these goods and/or services or add International Classes 37 and 41 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1402.04.

 

The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO's "homepage" on the Internet, which can be accessed at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual may also be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office (703) 306-2600.  See notice at 1190 TMOG 67 (Sept. 17, 1996).  In addition, the Manual is available in hard copy on a subscription basis form the Government Printing Office.  TMEP Section 1402.04.

 

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. Section 2.71(b); TMEP section 1402.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The applicant may adopt the following recitation of services, if accurate:

 

Installation of equipment for wireless voice and data networks; maintenance of wireless communications systems for voice and data, in International Class 37;

 

Providing training programs for technicians in the areas of system operations and troubleshooting, in International Class 41;

 

Engineering support for wireless communications systems for voice and data, namely RF planning and network design services in support of wireless networks for voice and data, including RF site surveys, network design, drive testing, and optimization; integration of equipment for wireless voice and data networks; software conversion services for updating wireless system software; providing customer response centers to help customers with management, performance, and growth of wireless communications networks; remote management of system maintenance and software downloads via LAN/WAN for wireless voice and data networks, in International Class 42.

 

Multiple-Class Application

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the services in each class and list the 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(b); 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.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

 

 

 

April Rademacher

/alrademacher/

Trademark Examining Attorney

Law Office 102

(703) 308-9102 x206

(703) 746-8102 (fax)

 

 

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.