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  76/573533

 

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

 

 

Search of Office Records

 

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 Services

 

The identification of services needs clarification because it could include services classified in other international classes.  TMEP §§1402.01 and 1402.03.

 

In the identification of services applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” then such terms must be followed by the word “namely” and a list of the specific services identified by their common commercial or generic names.  In addition, the applicant must refrain from using quotation marks, parentheses and brackets.  TMEP §§1402.01 and 1402.03(a).  The applicant may adopt the following identification, if accurate:

 

Class 35 – Business appraisal consulting services in process appraisal to organizations engaged in the acquisition or production of products and services.

 

Class 41 – Providing training in process appraisal to organizations engaged in the acquisition or production of products and services.

 

Class 42 – Computer consultation services, namely providing assessment services to businesses and governmental agencies and units to determine their computer development and design capabilities.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of  Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

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

 

The identification of goods for Class 16 is acceptable as submitted.

 

 

Additional Class(es) of Services

 

If applicant prosecutes this application with the addition of Class 35 and/or Class 41, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

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

 

(2)   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.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

 

Drawing – Lining

 

Applicant must submit a statement that the lining shown in the drawing is a feature of the mark.  37 C.F.R. §2.37; TMEP §807.09(e).  This statement may be in the following form:

 

     The lining in the drawing is a feature of the mark.

 

 

Dates of Use – Class 16

 

Applicant must amend the application to include dates of first use and use in commerce for the Class 16 goods.[1]  37 C.F.R. §2.86(a); TMEP §1403.01. If the dates differ from those already of record, then applicant must verify the new dates with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP 903.05.

 

 

Informational

 

Whether applicant chooses to respond via regular mail or electronic mail, applicant should submit its response using only one of these means of communication.  Duplicate responses will delay the prosecution of the application.

 

Applicants may now file requests to change the correspondence address electronically on up to 20 applications at one time.  The Office encourages applicants to use this time-saving form, available online at:  http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (3rd ed., Rev. 2, May 2003), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  Please note that an application serial number or registration number is needed to be able to access this database.  TARR is available 24 hours a day, 7 days a week.

 

 

 

/Matthew J. Pappas/

Trademark Attorney

Law Office 105

703/308-9105 ext. 206

matthew.pappas@uspto.gov (informal)

 

 

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.