UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/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 76/595324

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by TMEP section 707.02, the application has been AMENDED as indicated below.  Please advise the undersigned if there is an objection to the amendment.   

 

 

STANDARD CHARACTER DRAWING CLAIM

 

The following standard character drawing claim is added to the record:

 

The mark is presented in standard characters without claim to any particular font style, size, or color.

 

37 C.F.R. §2.52(a).

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

RECITATION AND CLASSIFICATION OF SERVICES

 

The recitation of services is unacceptable as indefinite.  It is not clear whether applicant is providing information or, if by “information exchange,” applicant is describing some other type of service, such as an online bulletin board.  In any case the service is not an “Internet service” in the sense that the Internet is merely the means used to access the service (the Office would interpret “Internet service” to mean that applicant is an Internet service provider).  In addition, applicant must clarify what type of information it is providing; for instance consumer information regarding the purchase of LED goods would be in Class 35, while technical information regarding LEDs would be in Class 42.  The applicant may adopt the following recitation, if accurate.  TMEP §1402.01.

 

“Providing [specify, e.g., “consumer,” “technical”] information via the Internet in the field of light-emitting diodes (LED), in International Class 00” (class to be determined by the nature of the information).

 

The applicant may want to consult The Acceptable Identification of Goods and Services Manual, published by the U.S. Patent and Trademark Office which is available on-line at www.gov.uspto.report/web/offices/tac/doc/gsmanual/.   As set forth in the TMEP, this manual "contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney."  TMEP sec. 1402.04.

 

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

 

DISCLAIMER REQUIREMENT

 

Applicant must disclaim the descriptive abbreviation “LED” apart from the mark as shown.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The term immediately describes and names the characteristics and features of the services, namely, it refers to the fact that applicant’s information exchange service is in the field of LED information.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “LED” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

ADVISORY NOTE:  ADVERTISING ONE’S OWN GOODS OR SERVICES

 

Advertising one’s own products or services is not a service. See In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970); TMEP §1301.01(a)(ii).  Therefore, businesses that create a web site for the sole purpose of advertising their own products or services cannot register a trademark used to identify that activity.  If the specimen of use submitted by applicant with its allegation of use makes it clear that applicant’s web site merely advertises the applicant’s own products or services, the examining attorney will have to refuse registration because the mark is used to identify an activity that does not constitute a "service" within the meaning of the Trademark Act. Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

 

 

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