Offc Action Outgoing

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  76/607924

 

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

 

NO SIMILAR MARKS FOUND

 

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.

 

STANDARD CHARACTER CLAIM

 

Trademark Rule 2.52, 37 C.F.R. §2.52, has been amended to replace “typed” drawings with “standard character” drawings. Applicant’s who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of the amended rule.  The applicant appears to have filed this type of mark.  Therefore, the applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

IDENTIFICATION OF GOODS

 

The wording in the identification of goods is unacceptable as indefinite because the functions of the software are unclear.  Specifically, the wording “content value management for electronic portability, digital rights management portability” is unclear.  The applicant must amend the identification to clarify the functions of the software.  Further, the wording “content related value added services and applications” is overly broad and the applicant must either clarify the nature of these goods or delete this wording from the identification as suggested below.

 

The applicant may amend this wording to the following, if accurate:

 

Computer software for copy protection security modification, anti-piracy rights management of audio, video and digital information and computer software for content management for electronic portability, namely, <specify function, e.g.; computer software for wireless http://atlas/netacgi/ - h5http://atlas/netacgi/ - h7content delivery> and digital rights management, namely, <specify function, e.g.; computer programs for enabling http://atlas/netacgi/ - h2http://atlas/netacgi/ - h4access or entrance control>, in International Class 9.

 

TMEP §1402.01.

 

RECITATION OF SERVICES

The wording in the recitation of services is unacceptable as overly broad.  The word “distribution” could include distributorship services in International Class 35 or physical distribution or delivery of goods in International Class 39, while the design and development of computer software is in International Class 42.  Further, the wording “content related value added services and applications” is overly broad and the applicant must either clarify the nature of these services or delete this wording from the recitation as suggested below.

 

The applicant may amend this wording to the following, if accurate:

 

Distributorships in the field of computer software, in International Class 35;

 

Design and development of computer software for others for copy protection security modification, anti-piracy rights management of audio, video and digital information and/or content value management for electronic portability and digital rights management portability, in International 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.

 

If the applicant adopts the suggested amendment to the identification of goods, the applicant must add one international class and amend the classification to International Classes 9, 35 and 42.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

MULTIPLE CLASS APPLICATION

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)     Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

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.

 

NOTE REGARDING STATUS OF APPLICATION

 

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the "#" symbol, after the welcoming message and tone. Callers may request information for up to five registration number or application number records per call.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or email.  306; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

The following authorities govern the processing of trademark applications:

§         The Trademark Act, 15 U.S.C. Section 1051 et seq.;

§         Trademark Rules of Practice, 37 C.F.R. Part 2;

§         Trademark Manual of Examining Procedure (TMEP).

To access these resources, please see http://www.gov.uspto.report/web/offices/tac/.

 

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

 

 

/Barbara Brown/

Trademark Examining Attorney, LO 116

TEL: 571-272-9134

FAX: 571-273-9116

 

 

 

 

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.