UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

 

Serial Number  76/658801

 

 

No Conflicting Marks Noted

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

 

 

INFORMALITIES

 

 

Identification of Goods

The identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  Applicant may substitute the following wording, if accurate:

 

 

“Computer programs, namely computer software and downloadable computer programs for use [specify functions of software and programs, e.g., for use in data processing, management, etc.] over global and local area computer networks” in International Class 9.

 

 

“Stationary, note pads, pens and related products, namely, [specify common commercial name for other products, e.g., writing ink, markers]” in International Class 16.

 

 

 “Clothing, namely, footwear, headwear and related products, namely, [specify, e.g., t-shirts, pants, etc.]” in International Class 25.   

 

 

“[Specify types, e.g., infant, pet, crib] toys, [specify, e.g., charismas tree] decorations, and related products, namely, [specify products]” in International Class 28.  TMEP §§1402.01 and 1402.03.

 

 

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 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

 

Recitation of Services

Applicant must clarify the identification of services to specify the nature of the services as well as their main purpose and their particular field of use or channels of trade.  Applicant may adopt the following identification of services, if accurate:

 

 

“Design of computer programs and software design for others in the field of [specify, e.g., building construction, etc.]” in International Class 42.  TMEP §1402.01.

 

 

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 804.09.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

 

Note:

The stated refusal refers to Classes 9, 16, 25, 28, & 42 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   amending or deleting the goods and/or services to which the refusal pertains;

 

(2)   arguing against the refusal of the application as a whole;

 

(3)   filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition for those goods or services to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)   changing the basis for the goods and/or services identified in the refusal, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

 

 

ID Manual is Available Online

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.

 

 

Drawing Requirements

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

 

Domestic Representative  - Optional

Applicant may designate a domestic representative upon whom notices or process may be served.  Trademark Act Section 1(e), 15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §§604, 811 and 1013.  If applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the Director of the USPTO.  Trademark Act Section 1(e), 15 U.S.C. §1051(e).

 

 

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

 

/Zachary R. Bello/

Trademark Attorney Advisor

Law Office 111

USPTO

571-272-9376

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.