Priority Action

RESPONSE TIME LIMIT: To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date. If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. TMEP §708.01.

OFFICE RECORDS SEARCH: The Office records have been preliminarily 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.

QUESTIONS: Please contact the assigned trademark examining attorney with any questions.

Serial Number 76/631609

The following were discussed in communication with KAY LYN SCHWARTZ on September 13, 2005. Applicant must respond to each refusal and/or requirement raised below.

EMAIL OR TELEPHONE RESPONSE ENCOURAGED FOR EXPEDITED SERVICE

Note that the applicant or attorney may reply to this Office action via telephone or email directly to the examining attorney, to expedite processing of this application via examiner’s amendment. Contact information appears below the examining attorney’s signature at the end of this letter.

DEFERRED SEARCH

The examining attorney has conducted a preliminary search of 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 §704.02. The examining attorney will conduct a more thorough search and decide on the merits of the application when the applicant responds to the inquiries addressed in this letter concerning the identification and classification of goods/services. 37 C.F.R. Section 2.61(b); TMEP §704.02. Until then, a complete search of the Office records and a review of the merits of the application are both deferred. TMEP §704.02.

INDUSTRY SIGNIFICANCE

Applicant must specify whether the wording “FAST INNOVATION” has any significance in the applicant’s trade or industry or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).

Trademark Rule 2.61(b) states: "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

GOODS/SERVICES

The in the identification of goods/services needs clarification because it is vague and names goods/services that belong in more than one class. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.

For computer software, the applicant must indicate the purpose(s) or function(s) of the computer program(s). If the software is field-specific, then applicant must also specify the field of use. TMEP §1402.03(d). This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks. See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

The applicant should note that software that is available on disc or that can be downloaded online belongs in Class 9, while the service of providing temporary use of nondownloadable software belongs in Class 42. In either case, the applicant must specify the function of the software.

The applicant may amend to the following, as may be accurate:

Class 9: computer software that (state function)

Class 35: business consultation; business management consulting services

Class 41: conducting educational seminars in the field of business management

The wording “manufacturing process and product manufacturing” is vague. The applicant may not register a trademark for a “process” because a “process” is not a service performed for others. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127. See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §1301.02(e).

If the applicant custom manufactures products to the order and specification of others, then “product manufacturing” may be amended to the following, if accurate:

Class 40: custom manufacture of (state what is manufactured, e.g., dental prosthetics) for others

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 §§1402.01 and 1402.03(a). Therefore, the applicant may only amend to include those goods or services that are within the scope of the goods and services recited in the present identification.

The applicant is advised that the above suggestions may not be a complete listing of acceptable specifications available to the applicant, but are instead provided only as suggestions. It is the applicant's duty to properly identify and classify the goods and services. TMEP Section 804.06. For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ or http://tess2.gov.uspto.report/netahtml/tidm.html.

Please also note that the applicant may not use the indefinite wording “and/or,” “or,” or “etc.” in its identification of goods/services. The applicant must use the more definite word “and” when listing more than one item. The applicant may not use parentheticals in its description of goods/services. The examining attorney used them above merely to indicate wording that requires further amendment.

MULTI-CLASS FILING RULES

Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least four international classes, however applicant paid the fee for only one class(es).

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

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

The filing fee for adding classes to an application is as follows:

(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

STANDARD CHARACTER CLAIM

Applicant must submit the following standard character claim: “The mark consists of standard characters without claim to any particular font, style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a).

/egk/

Elissa Garber Kon

Attorney, Law Office 106

phone: (571)-272-9181

fax: (571) 273-9181

email: elissagarber.kon@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 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