UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/598660

 

This letter responds to applicant’s communication filed on May 24, 2005.

 

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

 

Amendment

The requirement(s) of the (1) standard character claim, (2) claim of ownership for prior registrations, and (3) disclaimer of the word SOFTWARE has been satisfied and are now withdrawn.  TMEP §714.04.  However, the requirement(s) for the clarification of the identification of services was not satisfied and (2) due to the addition of the Class 35 services, an acceptable specimen displaying use in association with those services must be provided prior to registration.

 

Identification of Services

The wording “software subscription services; electronic commerce services, namely provision of software over the Internet” in the identification of services needs clarification because it is indefinite and too broad and could include services classified in other international classes.  TMEP §§1402.01 and 1402.03.  Applicant may substitute the following wording, if accurate:

 

Class 35

Licensing of computer software; online computer software ordering services featuring downloadable computer software; subscriptions to electronic journals, in International Class 35;

 

Class 42

Computer software services for others, namely coordinating and facilitating the design, development and customization of computer software components and applications; designing, developing, and customizing computer software components and applications for others; electronic commerce services, namely, providing temporary use of online non-downloadable computer software for [specify the function of the programs, e.g., for use in database management, for word processing, etc. and, if software is content- or field-specific, the field of use] over the Internet, in International Class 42.

 

TMEP §§1402.01 and 1402.03.

 

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.

 

Specimen

As discussed in the previous Office Action, applicant must submit a substitute specimen showing use of the mark for the Class 35 services specified in the application, because the specimen submitted in the response fails to legibly illustrate the mark and does not show use of the mark for any Class 35 services identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq..  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The current specimen of record comprises what appears to be a screenshot from applicant’s website or, in other words, advertising material that shows the proposed mark, in part, appearing at the top of the page.  It does not show use for applicant’s Class 35 services because there is no indication of how the software may be ordered or purchased, i.e. prices of software.  Applicant should provide a screenshot from the “Browse Catalog” page or a page that discusses the purchase of the software.

 

This application does not include a specimen for any of the identified class(es) of services.  A specimen showing use of the mark in commerce for each class of services is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a).  TMEP §904.  Other examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

 

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.

 

 

/Winston Folmar/

Staff Attorney

Law Office 101

(571) 272-9716 (Tel.)

winston.folmar@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.