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. 

 

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.

 

Serial Number  76/667931

 

The application was not signed and verified, which are application requirements.  15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34.  Therefore, applicant must verify, in an affidavit or signed declaration under 37 C.F.R. §2.20, the facts set forth in the application. 

 

If the application is based on use in commerce under Trademark Act Section 1(a), the verified statement must include the following allegation:  “The mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.”  15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §804.02.

 

If the application is based on an intent to use the mark in commerce under Trademark Act Section 1(b) or based on a foreign registration under Section 44, the verified statement must include the following allegation:  “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.”  15 U.S.C. §§1051(b)(3)(B), 1126(d) and (e); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b)-(d).

 

The recitations of goods and services are indefinite and contain services that are in various classes.  Applicant must rename the indefinite goods and services by using their common specific names and either restrict the goods and services to two classes of file a combined application for any additional classes.  The following suggestions are made:

 

Class 9 “network-based computer hardware and software (specify their functions) for the telecommunications industry used to steer telephone roaming traffic to specified or preferred telecommunications provider networks” would be acceptable; and

 

Class 38 the “custom development and design of communications systems for others” is in Class 42; the “hosting and integration” services are indefinite and must be renamed, for example “hosting of websites of others” is in Class 42 and “integration of computer systems” is in Class 42; “business consulting services directed to telecommunications companies” are in Class 35; and the remainder of the services are indefinite and must be renamed (the classes of the renamed services will be determined when applicant responds). 

 

If applicant prosecutes this application as a combined, or multiple-class application, 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; 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.

 

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.

 

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.

 

 

/David C. Reihner/, Examining Attorney

Law Office 111, 571-272-9392

571-273-9111 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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.