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  76/619249

 

The assigned trademark examining attorney has reviewed the referenced application filed on October 15, 2005, and has determined the following.

 

SEARCH RESULTS

 

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.

 

IDENTIFICATION OF GOODS AND SERVICES

 

International Class 009

 

The wording “computer hardware” is acceptable in International Class 009

 

The wording “scientific, photographic and optical apparatus and instruments,” however, is unacceptable, because they are headings of International Class 009.  The headings indicate the general scope of the classes.  Although such broad designations are sufficient under the trademark laws and practice of many countries, the U.S. Patent and Trademark Office considers them too broad to identify the goods or services in a United States application.  Therefore, the applicant must amend the identification to indicate the specific common commercial name of the goods.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §1401.08, 1402.01 and 1402.01(a).

 

Additionally, the wording “computer programs and software” is unacceptable as indefinite. Applicant must amend the wording to specify the function of the programs and software. See guidelines below:

 

Guidance on software identifications

Considering the wide variety of computer programs and the growth of the software industry, as well as the fact that many computer programs have limited applications or specific functions in specialized fields, the Office has taken the position that an acceptable identification of software must include the specific purpose or function or the program, or the specific application, as well as the specialized field, if applicable, in order that the Office may determine questions of likelihood of confusion in a manner reflective of the market place.  If the field is general purpose, the applicant should state so.  Be advised, that naming the intended user or industry does not sufficiently identify the purpose of the software (i.e. saying the software is for use in business, scientific, commercial and personal computing applications would not be sufficiently definite).  TMEP section 804.03(b).  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). 

 

The applicant may adopt the following identification, if accurate:

 

“scientific, photographic and optical apparatus and instruments, namely,____________(specify and list out the common commercial name of individual items); computer programs and software for _____________(specify purpose and/or function of the programs and software, e.g. database management, spread sheet, word processing, and indicate field if appropriate.); computer hardware.” International Class 009

 

International Class 010

 

The wording in International Class 010 is unacceptable as indefinite. Applicant must clarify the wording used to describe the goods to indicate the common commercial or generic name for the specific goods.  Applicant has submitted the class heading for International Class 010 as the identification.  The purpose of the class heading is to indicate the subject matter and general scope of the class and is considered too broad for identifying goods or services in U.S. applications.  TMEP §§1401.08, 1402.01 and 1402.01(a). For example, “medical and surgical apparatus and instruments, namely, orthopedic fixation device used in orthopedic transplant and/or implant surgery” is acceptable, and “surgical and medical apparatus and instruments for use in general surgery” is also acceptable. See suggested wording below:

 

“surgical, medical, and dental apparatus and instruments, namely,________(specify and list out common commercial name of the goods, and nature of use if appropriate), and veterinary apparatus and instruments namely,________(specify and list out common commercial name of the goods, and nature of use if appropriate).” International Class 010

 

International Class 042

 

The wording “design and development of computer hardware and software” is acceptable in International Class 042

 

The wording “scientific and technological services and research and design relating thereto,” in International Class 042 is unacceptable as indefinite. Applicant must clarify the wording used to describe the goods to indicate the common commercial or generic name for the specific goods.  Applicant has submitted the class heading for International Class 042 as the identification.  The purpose of the class heading is to indicate the subject matter and general scope of the class and is considered too broad for identifying goods or services in U.S. applications.  TMEP §§1401.08, 1402.01 and 1402.01(a). Applicant must amend the identification to indicate common commercial name of the services.  Applicant must limit the identification to the three classes paid for, or submit additional fees to prosecute this as a combined multiple class application. See suggested wording below:

 

“Scientific research.” International Class 042

 

“Technological research in the field of __________(applicant must specify the field in which the research is being conducted).” International Class 042

 

“Scientific services, namely,___________(applicant must specify the nature and field the services are in).” The International Class is dependent upon the nature and field of the services.

 

“Technological services, namely,___________(applicant must specify the nature and field the services are in).” The International Class is dependent upon the nature and field of the services.

 

The applicant may wish to consult the on-line identification manual on the USPTO homepage for acceptable common names of goods and services; and classification therefor.

 

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

 

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. Section 2.71(a); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification.

 

REQUIREMENTS FOR A COMBINED 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), and/or a foreign registration under Trademark Act Section 44(e):

 

(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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

APPLICATION PURSUANT TO SECTIONS 1(b) AND 44(d)

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

 

 

 

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.

 

 

gyao

Gretta Yao

Attorney

United States Patent and Trademark Office

Law Office 105

T. 571-272-9313

F. 571-273-9313

 

 

 

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.