UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/575994
APPLICANT: Global Health Council, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: GLOBAL HEALTH COUNCIL
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CORRESPONDENT’S REFERENCE/DOCKET NO: GLOBAL-T005X
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 76/575994
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. §1052(d). TMEP §704.02.
However, the applicant should note the following informalities.
Disclaimer
The applicant must disclaim the descriptive wording “GLOBAL HEALTH” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it describes the nature of the applicant’s services as written in the recitation. A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use GLOBAL HEALTH apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Recitation of Services – Incorrect Classification
The applicant has classified the services “providing news and information concerning global health issues and providing awareness of global health issues to the public, patients and health care professionals via a global computer network” incorrectly. The applicant must amend the application to classify the services in International Class 41. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
The applicant has classified the services “providing electronic publications via a global computer network, namely, newsletters featuring information about global health issues” incorrectly. The applicant must amend the application to classify the services in International Class 9. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
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. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification. The applicant should refer to the “Trademark Acceptable Identification of Goods and Services Manual” which is accessible through the PTO’s web site (http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/) for suggested language.
If the applicant elects to add International Class 9 to the application, the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods and services in each class and list the ^ 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 and 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. 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).
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on 10/19/04. To reach me by phone after that date call (571) 272-9272.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.
/Stephanie M. Davis, Esq./
Trademark Examining Attorney
Law Office 103
703.308.9103 ext. 210 (voice)
703.746.8103 (facsimile)
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.