Offc Action Outgoing

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: 5/24/2010

 

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Preliminary Amendment is Noted

 

The examining attorney notes the preliminary amendment filed March 23, 2010.  The signed declaration has been accepted and entered into the record.

 

Information Regarding the Mark’s Significance Required

 

Applicant must specify whether the wording “TRADE SPEC” or “TRADE SPECS” has any significance in the investment industry or as applied to the goods and services described in the application.  See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 814.

 

Amended Identification of Goods and Services Required

 

Class 009

The wording “computer software for use in relation to financial and investment matters” in the identification of goods must be clarified because it is unacceptably indefinite.  TMEP §1402.01.  Applicant must describe the particular function of its software (e.g., for conducting electronic securities trading transactions, etc.). Applicant may substitute the following wording, if accurate:  “computer software for [specify particular function ] for use in relation to financial and investment matters.”

 

Class 036

The wording “financial analysis services being a single security analytics system for equities and other securities; financial database services relating to investments, stocks and shares” in the identification of services is indefinite and must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, the wording “being a single security analytics system” may include computer software goods and services as well as computer hardware goods in other international classes.  Also, the wording “financial database services” could include computer software goods and services as well as general administrative services (such as data entry services) in other international classes.  Therefore, applicant must further describe the particular goods and/or services intended with sufficient specificity to determine their proper classification and adopt the appropriate International Class(es).

 

Note that activities that are performed by applicant’s computer software (rather than by individuals) are not distinct services but are simply functions or features of the computer software.

 

Applicant may substitute the following wording, if accurate: “financial analysis services featuring financial information derived from a single security analytics system for equities and other securities; financial database services relating to investments, stocks and shares, namely, providing computer databases featuring financial information about investments, stocks, and shares]” in International Class 036. 

 

To summarize, applicant may adopt the following identification of goods and services, if accurate:

 

Class 009         Computer software for [specify particular function ] for use in relation to financial and investment matters; computer software for the electronic administration and management of investment portfolios; computer software for analysis of financial information and data

 

Class 036         Financial and investment portfolio management services; financial analysis services; financial analysis services featuring financial information derived from a single security analytics system for equities and other securities; financial services being analysis of pre and post trading financial data and information; financial services being hedging and optimal portfolio construction; administration of investments, funds, shares and financial affairs; provision of financial and investment information and data, including by access to a computer database; financial database services relating to investments, stocks and shares, namely, providing computer databases featuring financial information about investments, stocks, and shares]; computerized financial analysis services

 

If the suggestions offered by the examining attorney are incomplete or are inaccurate, applicant is encouraged to consult the online searchable Manual of Acceptable Identifications of Goods and Services for guidance at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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.

 

Information Regarding Multi-Class Applications

 

The application identifies goods and services that may be classified in more than the number of international classes covered by the fee paid.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01. 

 

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 services based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and 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 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.

 

Clarification Regarding Section 44 Filing Basis 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 should respond to this Office action requesting suspension pending receipt of the foreign registration documentation.  TMEP §1003.04(b).; or

 

(2)        If applicant intends to rely 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(b).  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.

 

Miscellaneous Information Regarding Responding to this Office Action

 

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (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 in writing 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., explain why it 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 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.

 

 

 

 

 

 

 

/Debra Lee/

Trademark Attorney

Law Office 116

Voice:  571-272-5897

Fax:  571-273-9116

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 76701600) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 5/24/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76701600&doc_type=OOA&mail_date=20100524 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 5/24/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.