UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This letter responds to the applicant’s communication filed on July 16, 2009. The applicant (1) amended the identification of the goods and services, (2) amended the classification of services to International Class 042, (3) stated that YR20 has no significance in the network and computer-related goods and services industries, (4) submitted a substitute specimen for the services identified in the application without a verified substitute specimen statement, and (5) amended the applicant’s entity type from “corporation” to “limited liability company.”

 

The following requirements have been satisfied:  (1) Identification of Goods – International Class 009; (2) Classification; (3) Significance of the Mark; (4) Entity – Clarification Needed.  TMEP §§713.02, 714.04.

 

The following requirements are now made FINAL: (1) Identification of Services; (2) Applicant Must Submit a Substitute Specimen or Amend the Filing Basis to Section 1(b).  See37 C.F.R. §2.64(a).

 

Requirement: Identification of Services

THIS REQUIREMENT APPLIES TO CLASS 042 ONLY.

The examining attorney informed the applicant that the identification of services was indefinite and must be clarified because the wording used by the applicant was broad.  See TMEP §1402.01.  The examining attorney stated that the applicant must clarify the services being provided to consumers. Language such as “on-demand network solutions” is too broad. It was noted that the 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.

The applicant responded and amended the identification of services to the following:

International Class 042: On-demand network solutions, namely, design and development of networks; analysis and testing of computer networks, including performing complex computer network analyses, performing analyses of software applications on a network, namely, software applications on the network and capable of producing human readable output in the form of network charts, network graphs, network video displays, words presented on paper on the network, network web browsers, and other network presentation technology; management and long-term monitoring of computer networks; procurement of networks and optimization of computer networks. Computer network management services, namely, computer network testing for others, computer network analysis for others, computer network software applications analysis for others, managing computer networks for others, network reliability assurance in the nature of monitoring network reliability, and optimizing computer networks.

The applicant’s identification of services remains indefinite. First, the applicant’s identification still contains broad and indefinite wording that must be clarified. The applicant must clearly state the services being provided to consumers. Second, the identification of services includes services in other international classes, namely, procurement services, which are classified in International Class 035. Applicant may adopt the following identification of services, if accurate:

International Class 035: Procurement, namely, purchasing computer parts for computer networks for others.

International Class 042: On-demand network solutions, namely, design and development of networks; analysis and testing of computer networks, including performing complex computer network analyses, computer software analysis, namely, performing analyses of software applications on a network, namely, software applications on the network that is capable of producing human readable output in the form of network charts, network graphs, network video displays, words presented on paper on the network, network web browsers, and other network presentation technology; management of computer networks for others and long-term remote computer network technical monitoring; optimization of computer networks, namely, maintenance and repair of computer networks; Computer network management services, namely, computer network testing for others, computer network analysis for others, computer network software applications analysis for others, managing computer networks for others, network reliability assurance in the nature of monitoring network reliability, and optimizing computer networks, namely, maintenance and repair of computer networks.

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.

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.

Since the applicant failed to provide an acceptable identification of services, this requirement is maintained and is now made FINAL.

Advisory: Multiple Class Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those 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; 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).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Requirement: Applicant Must Submit a Substitute Specimen or Amend the Filing Basis to Section 1(b)

 

THIS REQUIREMENT APPLIES TO CLASS 042 ONLY.

 

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

 

The applicant submitted a substitute specimen but failed to submit a verified substitute specimen statement. Therefore, the applicant’s specimen is not acceptable. The applicant must submit a verified substitute specimen statement.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce 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, 2.33:  “The substitute 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 substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

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, 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

 

Since the applicant failed to submit a substitute specimen with a verified substitute specimen statement, this requirement is maintained and is now made FINAL.

 

Response Guidelines

 

If applicant does not respond within six months of the date of issuance of this final Office action, the following class to which the final requirements apply will be deleted from the application by Examiner’s Amendment:  International Class 042.

 

The application will then proceed for the following class: International Class 009. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

If applicant has questions about its application, 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.