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  76/582649

 

The following issues were discussed in communication with Sandy Watling for EDWARD J. KONDRACKI on October 22, 2004.

 

Standard Character Claim

Please provide a standard character claim.

 

Servicemark Recitations/Multiple Classes

Virtually the entire identification is indefinite; it also involves services in several different classes.  Please limit the application to a single class or add the extra classes as indicated below.  If the dates of use are the same for each class, a further declaration is not required.  Otherwise, an additional declaration will be needed.  The specimen of record is acceptable for all the classes noted below.

 

Suggested wording for proper service mark identifications that may be adopted, as appropriate, would read as follows:

 

Testing to determine professional competency regarding awareness for compliance with HIPAA regulations and regarding mitigating information security risks; public http://atlas/netacgi/ - h1http://atlas/netacgi/ - h3policy research services to develop an awareness for compliance with HIPAA regulations and to mitigate information security risks, in Class 35

 

Providing training regarding compliance with HIPAA regulations and providing training to provide information to mitigate security risks in information technology systems; providing educational classes, seminars and workshops regarding compliance with HIPAA regulations and providing educational classes, seminars and workshops to provide information to mitigate security risks in information technology systems; educational testing regarding awareness for compliance with HIPAA regulations and regarding mitigating information security risks, in Class 41

 

Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities, in 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. §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.

 

Applicant also may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification at the site listed below. 

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

The examining attorney may also be contacted at the telephone numbers below for further consultation regarding the identification.

 

Applicant may limit the application to a single class or file the extra fees of $335 per class along with dates of use supported by an affidavit or declaration for each class.  The current specimens support use for each class, so no further specimens are required.

 

Response Guidelines

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.

 

Please note: If the applicant submits a response via electronically, an electronic signature is required.  An applicant, registrant or attorney may sign an electronic communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an electronic communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg format.  TMEP  Section 304.08.

 

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

 

 

/Paul F. Gast/

Examining Attorney, L. O. 106

(571) 272-9163  PHONE

(571) 273-9106  FAX

 

 

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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