Offc Action Outgoing

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

SEARCH OF OFFICE’S DATABASE OF MARKS

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.

CLASSIFICATION OF GOODS/SERVICES

Applicant classified the services “installation and maintenance of computer software in the field of combating money laundering, in fraud detection and in security” in International Class 9; however, the correct classification is International Class 42. Applicant must either delete these services or add International Class 42 to the application. 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.04(b).

IDENTIFICATION OF GOODS/IDENTIFICATION OF SERVICES

The wording “supply” in the identification of services is indefinite and must be clarified because it is unclear and does not provide the specific name of the services. See TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

Applicant may adopt the following identification of goods and services, if accurate:

Computer software for use in combating money laundering, in fraud detection and in security in financial industries—Int’l. CL. 9;

Installation, maintenance and providing temporary use of on-line non-downloadable computer software for use in for use in combating money laundering, in fraud detection and in security in financial industries—Int’l. CL. 42. See TMEP §1402.01.

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or 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 goods and/or services that are not within the scope of the goods and/or 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.

MULTIPLE – CLASS APPLICATION REQUIREMENTS

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

(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 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

FOREIGN REGISTRATION CERTIFICATE REQUIRED

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04.; or

(2) If applicant intends to rely solely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04. Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.

Further action awaits response by the applicant to the above.

/Samuel E. Sharper, Jr./

Trademark Examining Attorney

Law Office 108

(571) 272-9217 voice

(571) 273-9108 official fax

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.