Offc Action Outgoing

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Informational: No Similar Marks Found

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Requirement: Identification of Goods – International Class 009

The identification of goods is indefinite and must be clarified because the applicant must clarify the function of the applicant’s computer software and hardware. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

International Class 009: Computer software and computer hardware for network testing, network analysis, and network reliability assurance.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Requirement: Identification of Services – International Class 037

The identification of services is indefinite and must be clarified because the wording used by the applicant is broad. See TMEP §1402.01. The applicant must clarify the services being provided to consumers. Language such as “on-demand network solutions” is too broad. Applicant may adopt the following identification, if accurate:

International Class 042: On-demand network solutions, namely, {state the specific network-related services being provided by the applicant, i.e. design and development of networks, etc.}, Computer network management services, namely, computer network testing for others, computer network analysis for others, and computer network management, namely, network reliability assurance in the nature of monitoring network reliability.

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

Requirement: Classification

THIS REQUIREMENT APPLIES TO THE SERVICES CLASSIFIED IN CLASS 037 ONLY.

The services are classified incorrectly. Applicant must amend the application to classify the services in International Class 042. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

Requirement: Significance of the Mark

Applicant must specify whether the wording “YR20” has any significance in the computer software and hardware and network-related services trade or industry or as applied to the goods and services described in the application. See 37 C.F.R. §2.61(b); TMEP §§808.01(c), 814.

Requirement: Applicant Must Submit a Substitute Specimen for the Services Classified in International Class 037 or Amend the Filing Basis to Section 1(b) – Current Specimens of Record Do Not Show the Mark Used in Connection With the Identified Services

THIS REQUIREMENT APPLIES TO THE SERVICES CLASSIFIED IN CLASS 037 ONLY.

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the services specified in the application. An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services based on Section 1(a) in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04.

In this case, the specimens show the mark appearing on various pieces of computer hardware and on packaging for goods. Thus, the specimens do not show the mark appearing in connection with the sale or advertising of the identified services. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

If submitting a substitute specimen requires amendment to the dates of use, applicant must verify the amended dates in an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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 applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has 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 filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Requirement: Entity – Clarification Needed

The designation “LLC” is included in applicant’s name, but the entity type is set forth as a “corporation.” Generally, “LLC” identifies a “limited liability company,” and not a corporation. Therefore, applicant must specify whether it is a limited liability company or a corporation and amend the application accordingly. TMEP §803.03(h).

If applicant is a limited liability company, the U.S. state under whose laws it is organized must be stated. Id.

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused under Trademark Act Section 1 because the application was void as filed. An application must be filed by the owner of the mark. 15 U.S.C. §1051; 37 C.F.R. §2.71(d); TMEP §§803.01, 803.06.

Response Guidelines

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Seth A. Rappaport/

Seth A. Rappaport

Trademark Examining Attorney

Law Office 103

Phone: (571) 270-1508

Fax: (571) 270-2508

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.