To: | National Information Solutions Cooperati ETC. (sl@blackwellsanders.com) |
Subject: | TRADEMARK APPLICATION NO. 76567293 - NISC - 717841.10 |
Sent: | 7/23/04 4:07:43 PM |
Sent As: | ECom114 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/567293
APPLICANT: National Information Solutions Cooperati ETC.
|
*76567293*
|
CORRESPONDENT ADDRESS: LAWRENCE E. EVANS BLACKWELL SANDERS PEPER MARTIN LLP 720 OLIVE ST FL 24 SAINT LOUIS MO 63101-2338
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
MARK: NISC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 717841.10
CORRESPONDENT EMAIL ADDRESS: sl@blackwellsanders.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
PRIORITY ACTION
OFFICE SEARCH: 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. Section 1052(d). TMEP section 704.02.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Serial Number 76/567293
The following issues were discussed in communication with Larry Evans on July 23, 2004.
The identification of goods and services is unacceptable as indefinite. TMEP sections 1402 and 1402.11. In the identification of goods, the applicant’s use of the phrase “training manuals related thereto,” does not clearly indicate that the manuals are sold as a component of the software package. If the manuals are sold separately, albeit “related to” the computer software, the proper classification is International Class 16. In that case, the applicant must clearly specify the subject matter of the manuals.
The identification of services also needs clarification because applicant uses the wording “including.” The identification of services must be specific and all-inclusive. Applicant should amend the identification to replace this wording with "namely." Please note that applicant may amend the identification to list only those services that are within the scope of the services set forth in the application. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a). While in some instances the applicant uses the wording “namely,” the term is followed by and indefinite recitation of services – that indefiniteness should be further clarified using the suggested format.
The applicant may adopt the following identification, if accurate:
Computer software, namely an integrated enterprise system having billing modules, accounting modules and engineering modules used by rural electric and telecommunications
cooperatives, and training manuals related thereto sold as a unit therewith, in International Class 9.
Business services, namely, automated mailroom services, namely, including the printing and mailing of bills and other consumer related documents, as
well as the receiving and processing of remitted payments and other consumer related documents, for rural electric and telecommunications cooperatives; data center services namely,
including the storage, processing, maintenance and management of data, for rural telecommunications cooperatives consolidation, payment and analysis of utility bills for others; management
consulting and training for rural electric and telecommunications cooperatives, in International Class 35.
Training in the field of computer hardware and software support for rural electric and telecommunications cooperatives, in International Class 41.
Technical support services, namely hardware and software support in the nature of [specify the type of “support” provided, e.g.:
troubleshooting of computer hardware and software problems] and training, network analysis, virtual private networks, wide area and local area network solutions for rural electric and
telecommunications cooperatives; application service provider (ASP) services, namely, the storage, processing, maintenance and management of data, for rural electric cooperatives, in International
Class 42.
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(a); TMEP sections 1402.06 and 1402.09. Therefore, the applicant may not amend to include any goods/services that are not within the scope of goods/services set forth in the present identification.
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 goods/services in each class and list the goods/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).
Applicant’s claim of ownership of U.S. Registration No(s). 2472557 will not be printed on any registration which may issue from this application because the marks are different. Only prior registrations for the same or similar marks are considered related registrations for purposes of an ownership claim. 37 C.F.R. §2.36; TMEP §812.
Likewise, the applicant’s claim of ownership of Application Serial No. 78252905 will not be printed on any registration which may issue from this application. If the claimed pending application matures into a registration before this application, the applicant may then claim ownership by registration number. 37 C.F.R. §2.36; TMEP §812.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Tricia McDermott Thompkins /TMT/
Trademark Attorney
Law Office 114
Phone No.: 703-308-9114 x263
Fax No.: 703-746-8114/6506
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