Offc Action Outgoing

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  76/622430

 

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

 

Office Search

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Drawing of the Mark

Applicant has submitted a standard character claim, but has omitted a separate drawing page.  Applicant should submit a standard character drawing of the mark for scanning into the Office records.

 

The requirements for a standard character drawing submitted on paper are as follows:

 

·        a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);

 

·         one of the shorter sides of the sheet should be regarded as its top edge;

 

·        include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;

 

·        depict the mark in black print, for example, as GOLDEN OPPORTUNITY, INC.

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a) and 2.54; TMEP §§807.03, 807.03(a) and 807.06 et seq.

 

Disclaimer Required

Applicant must insert a disclaimer of “INC.” in the application because it is a business entity designator.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).  Terms such as “Corporation,” “Inc.” and “Ltd.” must be disclaimed because they merely specify applicant’s entity type and do not function as a trademark or service mark to indicate source.  See In re Patent & Trademark Services, Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re Industrial Relations Counselors, Inc., 224 USPQ 309, 310 n.2 (TTAB 1984); In re E. I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984); TMEP §1213.03(d).

 

The following is the accepted standard format for a disclaimer:

 

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

 

Amended Identification of Services Required

Applicant must remove any parentheses from the identification of services and incorporate the parenthetical information into the description.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, for example, “obi (Japanese sash).”  TMEP §1402.12.

 

Additionally, applicant must clarify the field or subject matter of the technology training and coaching (for example,  “technology training and coaching in the field of web site development and desktop software development”), and must indicate the field or subject matter of the workshops for adults and children (for example,  “educational workshops for adults and children in the field of web site development and desktop software development”). 

 

Applicant may adopt the following identification, if accurate: 

 

Technology training and coaching in the field of web site development and desktop software development; providing motivational speakers; conducting workshops for adult and children in the field of _____ (specify, for example, web site development and desktop software development) (Class 41). 

 

TMEP §1402.01.

 

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.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Amended Classification of Services Required

Applicant must correct the classification of the services in the application and amend the application to classify them in International Class 41.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  This Office incorrectly classified the services in International Class 9, during the preliminary review of this application.

 

Response Guidelines

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

/Kathleen de Jonge/

Examining Attorney, Law Office 116

(571) 272-9152

(571) 273-9116 (fax)

 

 

 

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 has been 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.