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  76/562199

 

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

 

PRIOR PENDING APPLICATION – International Class 9

 

Information is enclosed concerning pending Application Serial No. 76/519002.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier-filed application registers, registration in International Class 9 may be refused under Section 2(d).  37 C.F.R. §2.83.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is unacceptable as indefinite.  TMEP §§1402.01 and 1402.11.  Moreover, the goods and services fall in at least three international classes.  The applicant must either limit the goods and services to those falling in a single class or add the relevant class or classes to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The applicant may adopt the following identification, if accurate: 

 

“computer software _______________________ (specify actual function of software, e.g., for use in database management, for use in tax return preparation, for use as a spreadsheet, for use in word processing) for retail businesses,” in International Class 9; and/or,

 

“human resources services, namely, ___________________ (specify nature of service being provided, e.g., serving as a human resources department for others, human resources consultation services); business consulting services; operating retail businesses of others; business services, namely, accounting, bookkeeping and accounts receivable services; administration of business payroll for others; management reporting services, namely, _____________ (specify nature of services); and licensing of ____________ (specify field or area, e.g., computer software),” in International Class 35; and/or,

 

“accounts payable debiting services; financial analysis services for retail businesses; business and financial services, namely, administration of employee benefit plans, and tax services, namely, ________________ (specify exact nature of service being provided, e.g., payroll tax debiting services, tax payment processing services),” in International Class 36.

 

Classification Issues:  Note that some “tax services” will be classified in International Class 35 as opposed to International Class 36.  For example, tax consultation, tax preparation and tax assessment services are all classified in International Class 35.  In addition, “intellectual property licensing services” are classified in International Class 42, as opposed to International Class 35, and both “accounts payable debiting services” and “financial analysis” services are classified in International Class 36.  Finally, some “payroll” services will also be classified in International Class 36.

 

On-line Acceptable Identification of Goods and Services Manual information:  For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services.  While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.

 

Additions Not Allowed:  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 goods or services that are not within the scope of the goods and services recited in the present identification.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and services that are classified in three or more international classes, however the applicant paid the fee for only one class.

 

The applicant must either: (1) restrict the application to the class covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If the applicant prosecutes this application as a combined, or multiple-class application, then the applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b:

 

(1)   The applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   The 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.

 

MEANING INQUIRY

 

The applicant must indicate whether “SAVISTA” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

RESPONSE GUIDELINES

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them. 

 

The response must be signed by someone properly authorized to act on behalf of the applicant.  A person who is properly authorized to sign on behalf of an applicant is:  (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. §10.1(c) who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.  37 C.F.R. §2.33(a); TMEP §804.04.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone: (703) 308-9106 ext. 221

Fax:  (703) 746-8106 (formal responses)

 

 

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.