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  76/634903

 

The assigned examining attorney has reviewed the referenced application and 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.

 

The applicant must respond to the following informalities.

 

Inquiry on Significance

The applicant must indicate whether “RAFI” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Identification of Goods and Services

The wording in the identification of goods and services is unacceptable as indefinite because it includes terms which require further specification. The function and field of use of the software must be specified. Are the goods downloadable software in IC 9 or is the applicant providing use of  non-downloadable software in IC 42?  The applicant may amend this wording to the following, if accurate.  TMEP section 1402.01 and 1402.11

 

Class 9 - Computer software for use in providing financial and investment information services, namely, preparation of a financial index; securities analysis, classification and reporting, and mutual fund investing services, all for the provision of an index-based portfolio of securities and an index-based mutual fund;

 

Class 36 -  financial services, namely providing financial and investment information services in the nature of a financial index; securities analysis, classification and reporting services; mutual fund investing services;  [the applicant has not specified a service related to the “index-based portfolio of securities and an index-based mutual fund”  Is this “management” of  index-based portfolio of securities and an index-based mutual fund?];

 

In the identification, the applicant must use the common commercial names for the goods and services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names. For services, the applicant may not include broad wording such as "services in connection with..." or "such as" or "including" or "and like services" or "systems" or "products" or "concepts" or "not limited to...."  TMEP sections 1402.01, 1402.03(a), and 1402.11.

 

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.

 

Combined/Multiple Class Application

The application identifies goods and/or services that are classified in at least two classes; however, the fees submitted are sufficient to cover one  class only. 

 

Applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

Applicant must list the goods and/or services by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 per class to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 per class to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

Signed Declaration Required

The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.

 

The following declaration is provided for the applicant's convenience:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

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

 

 

Mrs. A.D. Saunders

/Mrs. A. D. Saunders/

Trademark Attorney

LO 108

(571) 272-9349

(571) 273-9108 (formal responses only)

 

 

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.