Offc Action Outgoing

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. Section 1052(d). TMEP section 704.02.

Requirement: Identification and Classification of Services

The identification of services is unacceptable as indefinite. Additionally, applicant may have misclassified some of the services described. Accordingly, applicant must amend the wording of the identification and the classification of the services as indicated. 37 C.F.R. sections 2.32(a)(7) and 2.85; TMEP sections 1401.02(a), 1401.03(b), and 1402.01.

Computer website consultation – Applicant must amend this wording to clarify the nature of the services, i.e., to indicate the area of the consultation since the current wording could include any number of services.

Domain name registration for identification of users on a global computer network, renewal and account management services – These services are all now classified in class 45.

Technical support, namely, monitoring and reporting of website traffic – Applicant must indicate that these services are provided “for others.”

For example, the wording and classification may be amended as follows:

CLASS 42:

- Computer services, namely, designing, implementing and managing websites for others specifically for mobile and handheld devices including cellular telephones and personal digital assistants ;providing templates for design of websites via electronic communication networks; providing temporary use of on-line non-downloadable computer software development tools for creating websites and creating electronic bulletin boards for the transmission of messages among computer users; computer website consultation in the areas of website design and development; redirecting electronic mail to changed personal electronic addresses; hosting the websites of others on a computer server for a global computer network; domain name searching services; computer virus detection and removal; spam filtering on a global computer information network, namely filtering of unwanted electronic mail messages on a global computer information network; computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software for the collection, storage and sharing of data and information in the nature of email addresses of others; technical support, namely, monitoring and reporting of website traffic for others.

CLASS 45:

- domain name registration for identification of users on a global computer network, renewal and account management services;.

In the identification of services, the applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "systems," "products," "concepts," or "not limited to," then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).

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. Section 2.71(a); TMEP section 1402.06. Therefore, applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

Applicant must adopt the appropriate international classification number for the goods and services identified in the application. The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services. 37 C.F.R. §6.1; TMEP §§1401 et seq.

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/.

Requirement: Requirements for a Multiple-Class Application

If applicant prosecutes this application as a combined, or multiple‑class, application, applicant must comply with each of the following.

(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. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

Response Guidelines

Please note, there is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (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 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., submit arguments and/or evidence as to why the refusal 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.

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

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.