UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY 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.  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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

OFFICE RECORDS 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.

 

ADVISORY – AMENDMENTS TO GOODS/SERVICES:  If the identification of goods and/or services has been amended below, any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

 

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

 

 

Serial Number 76/660519

 

EXAMINER'S AMENDMENT

 

AMENDMENT(S) AUTHORIZED:  As authorized by John Hale on October 26, 2006, the application is amended as noted below.  If applicant disagrees with or objects to any of the amendments below, please notify the undersigned trademark examining attorney immediately.  Otherwise, no response is necessary.  TMEP §707.   

 

Standard Character Claim

 

The following standard character drawing claim is added to the record:

 

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).

 

 

 

 

 

PRIORITY ACTION

 

Applicant must respond to each refusal and/or requirement raised below.  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 and 708.05.

 

 

Identification of Goods

 

The current wording “A COMPUTER SYSTEM THAT ALLOWS ANY UHF GEN 2 TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, RFID READERS AND RFID HANDHELD READERS” in International Class 009, used to describe the goods needs clarification because the term "system" in the identification of goods is unclear and requires clarification.  Applicant must rewrite the goods by listing the major parts or components of the system and describing the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts and/or components of the system.  Further, industry acronyms should be expanded for clarity, where the industry acronyms may be included in the wording within parentheses.  TMEP §1402.03. Applicant may adopt the following identification of goods, if accurate:  “A COMPUTER SYSTEM COMPRISING COMPUTER HARDWARE AND RFID READERS, THAT ALLOWS ANY ULTRA HIGH FREQUENCY (UHF) GENERATION 2 (GEN 2) TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, RFID READERS AND RFID HANDHELD READERS.”  TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

 

 

Disclaimers

 

Applicant must disclaim the descriptive wording “NETWORK” apart from the mark as shown because it merely describes a feature of applicant’s computer goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The term “network” as used in relation to computers, is defined as “system of computers: a system of two or more computers, terminals, and communications devices linked by wires, cables, or a telecommunications system in order to exchange data. The network may be limited to a group of users in a local area local area network, or be global in scope, as the Internet is.”  See attached dictionary definition.  Applicant’s goods for “A COMPUTER SYSTEM” fall squarely under this definition. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

 

 

 

 

Ada Han

/Ada P. Han/

Trademark Attorney

Law Office 106

(571) 272-5873

(571) 273-9106 (fax)

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

·            ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.

·            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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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