UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/573209
APPLICANT: cMedia Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: CMEDIA
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CORRESPONDENT’S REFERENCE/DOCKET NO: 26102-916
CORRESPONDENT EMAIL ADDRESS: |
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.
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Serial Number 76/573209
The assigned examining attorney has reviewed the referenced application and determined the following.
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 1105.01.
The applicant must insert the following:
“The mark is presented in standard character format without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
The examining attorney strongly suggests that the applicant consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services. The manual is available at: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.
PLEASE NOTE: 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.
Some of the wording in the identification of goods is unacceptable as misclassified and indefinite.
The applicant may adopt from the following:
Class 009:
The identification of goods is unacceptable as indefinite because the applicant must indicate the field of use for its software if the software is content- or field-specific. If the software is not content- or field-specific, the applicant must indicate that its software is “general purpose.” TMEP section 1402. This additional information is necessary to permit this Office to reach judgments concerning possible conflicts between the applicant's mark and other marks. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). In this case, the following formulations appear to be appropriate:
Class 9: Computer hardware; Computer software for intake, storage, management, delivery, distribution, searching, retrieval, display, and organization of audio and video images for use [SPECIFY the field of use, e.g. by police departments and judicial agencies];
Class 9: Computer hardware; General use computer software for intake, storage, management, delivery, distribution, searching, retrieval, display, and organization of audio and video images. The applicant must amend to adopt one of these identifications, if appropriate.
Class 037:
The applicant has classified the services incorrectly. The applicant must amend the application to classify the services in International Class 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b). See suggestions below.
The applicant has not identified any services in Class 37; accordingly, the applicant must delete this International Class.
Class 042:
The wording "support…of software" in the recitation of services is unacceptable as indefinite because the applicant must specify the nature of the computer support services. TMEP §1402.
The wording “integration” in the recitation of services is unacceptable as indefinite because the exact nature of these services is unclear. TMEP §1402.
The applicant may adopt the following recitation of services in International Class 42, if accurate:
Integration of computer systems and networks; Engineering services; Maintenance, installation and upgrading of computer software; Technical support services, namely, troubleshooting of computer software problems.
The applicant must state on the record the significance of the wording "CMEDIA" in the relevant trade or industry and as applied to its own goods and services. 37 C.F.R. Section 2.61(b).
Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application." The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).
The specimens are unacceptable as evidence of actual trademark use because they do not show use of the mark for any goods or services identified in the application. With respect to the specimen for International Class 9, the mark is illegible on the picture of the applicant’s goods. With respect to the applicant’s services, the submitted specimens are online advertisements for the applicant’s goods and do not reference any services identified in the applications.
The applicant must submit one specimen per International Class showing the mark for the identified goods and services as used in commerce. 37 C.F.R. Section 2.56. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application. Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP section 905.10.
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.
Examples of acceptable specimens for services are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP section 1301.04.
A specimen is unacceptable if it does not show use of the service mark in relation to the identified service. Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). The specimen must show use of the mark "in the sale or advertising of services." Trademark Act Section 45, 15 U.S.C. Section 1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973); TMEP section 1301.02. Therefore, the specimen must show the mark in reference to the particular services identified.
The statement supporting use of the substitute specimens must read as follows:
The substitute specimens were in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. See below for a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).
If the applicant cannot comply with the requirement for the specimens of use for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
Requirements for an application based on §1(b): Intent to use
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and services listed in the application since the filing date of the application.
This statement must be must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. Sections 2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.34(a)(2)(i).
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must 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(a); 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.
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
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 applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
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.
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.
/SEH/
S. E. Hickey
Attorney
Trademark Law Office 112
703/308-9112 ext. 110
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.