Offc Action Outgoing

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  76/565339

 

The assigned trademark examining attorney has reviewed the referenced application filed on December 16, 2004, and has determined the following.

 

Search Results

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.

 

Identification of Goods and Services

The description and classification of goods and services should be amended as follows, if accurate, to comply with the Office’s on-line classification manual and to be sufficiently definite:

In Class 9 – computer software and programs (indicate field and function, computer operating programs, downloadable software (indicate field and function), computer workstations comprising (list major hardware components), portable communications (list items by generic designation), computers and information processing (list items by generic designation);

In Class 35 – commercial information agencies, marketing research, providing statistical information, records management, namely, document indexing for others, business management and organizational consultancy, business information (indicate subject matter), news clipping services, cost/price anlysis, commercial or industrial management consulting, public opinion polling, personnel management consulting and data processing. 

In Class 40 – duplication of computer programs; document data transfer and physical conversion from one media to another;

In Class 41 – training in the use of computers, correspondence schools, educational testing, arranging and conducting seminars (indicate field or subject);

In Class 42 – rental of computers and software, computer software design for others, installation of computer software, updating of computer software for others, maintenance of computer software, computer system design for others, computer systems analysis, computer programming for others, data conversion of computer program data, consulting in the field of computer hardware, hosting web sites of others on a computer server for a global computer network, creating and maintaining web sites for others, recovery of computer data and research and development for new products for others.

The omitted items are indefinite, redundant or otherwise unacceptable.

 

Please note that, while the identification of goods and services may be amended to clarify or limit them, adding to the goods or services or broadening their scope is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods or services that are not within the scope of those set forth in the present identification.

 

Combined Applications

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and services based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

 

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

 

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

 

Disclaimers

Applicant must disclaim the descriptive wording “integrated land administration services” apart from the mark as shown because it merely describes the focus of applicant’s goods and activities, managing real property, and that the computer medium performs more than one function.  (See attached definition from an on-line dictionary.)  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “integrated land administration services” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Drawing

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it is too large and will not reproduce satisfactorily.  TMEP §807.07(a).

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The Office will only accept an image in .jpg format.  The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.  37 C.F.R. §2.53.

 

Certificate Required

If applicant will be asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

Option to Delete Basis

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

Fee Increase

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

/Hannah M. Fisher/

Trademark Examining Attorney

Law Office 111

(301) 610-5388 or

(703) 308-9110 ext. 171

FAX: (703) 746-8111

 

 

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.