Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/567296

 

The following issues were discussed in communication with Larry Evans on July 23, 2004.

 

Identification of Goods/Services

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 data center services namely, including the storage, processing, maintenance and management of data, for rural telecommunications cooperatives, in International Class 35.

 

Training in the field of computer hardware and software support, 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).

 

Registrations/Applications Will Not Be Printed

Applicant’s claim of ownership of U.S. Registration Nos. 2472557 and 2495945 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