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  76/581062

 

The assigned trademark examining attorney has reviewed the referenced application filed on 3/12/04, and has determined the following.

 

Search Results

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 and Classification of Goods/Services

The identification of goods and service is unacceptable because, as worded, the exact goods/services are unclear. Further, the applicant has unacceptably combined the goods with the services. In the identification, applicant must use the common commercial or generic names for the goods/services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §§1402.01 and 1402.03(a). Applicant may change this wording to the following:

 

Class 9:                        Computer software for use management of financial portfolios.

 

Class 36:                        Financial portfolio management consultation.

 

TMEP §1402.01.

 

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

 

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/>.

 

Specimen – Unacceptable for Class 9 Goods

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

 

The current specimen of record comprises a marketing piece or company overview brochure and is acceptable for the Class 36 services. However, it is unacceptable as evidence of actual trademark use because it fails to show use of the mark properly in connection with the identified goods [software]. 

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

 

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.

 

 

/R.L.F./

Ronald L. Fairbanks

Trademark Attorney

Law Office 112

(703)308-9112 ext. 137

 

 

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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.