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  77/000773

 

The assigned trademark examining attorney has reviewed the referenced application and the preliminary amendment dated October 16, 2006 and has determined the following.

 

SEARCH

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

PRIOR PENDING APPLICATION

 

Information regarding pending Application Serial No. 76485041 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq. 

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Therefore, upon receipt of the applicant's response resolving the following requirement(s), action on this application may be suspended pending final disposition of the earlier-filed application.

 

IDENTIFICATION OF GOODS

 

The wording “computer programs and other computer software” in the identification of goods is indefinite and must be clarified to indicate the purpose or function of the software.  If the software is field-specific, applicant must also specify the field of use.  TMEP §1402.03(d).  Clarification of the purpose, function or field of use is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Please note, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

Applicant may adopt the following identification, if accurate:

 

International Class 009: Computer programs FOR [PLEASE SPECIFY THE FUNCTION OF THE PROGRAMS, E.G., USE IN DATABASE MANAGEMENT, USE AS A SPREAD SHEET, WORD PROCESSING, ETC. AND, IF PROGRAM IS CONTENT- OR FIELD-SPECIFIC, THE CONTENT OR FIELD OF USE] and computer software FOR [PLEASE SPECIFY THE FUNCTION OF THE PROGRAMS, E.G., USE IN DATABASE MANAGEMENT, USE AS A SPREADSHEET, WORD PROCESSING, ETC. AND, IF SOFTWARE IS CONTENT- OR FIELD-SPECIFIC, THE CONTENT OR FIELD OF USE]

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

CERTIFICATE OF REGISTRATION REQUIRED – SECTION 44(e)

 

The application does not include a copy of the foreign registration.  An application filed under Section 44(e) of the Trademark Act must include a true copy, photocopy, certification or certified copy of a foreign registration, or a registered extension of protection of an international registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004 et seq. 

 

Applicant’s country of origin must 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.  See TMEP §§1002.01 and 1004.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must submit a copy of the foreign registration in order to satisfy the requirement of Section 44(e).  If the foreign certificate of registration is not written in English, applicant must also provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

ADVISORY – STANDARD CHARACTER CLAIM IN U.S. APPLICATION – FOREIGN REGISTRATION NOT YET SUBMITTED

 

The U.S. application, which is based on a foreign registration pursuant to 15 U.S.C. §1126(e), contains a standard character claim.  However, because the foreign registration has not yet been submitted, the record is unclear as to whether the foreign registration includes this claim.  The mark in the U.S. application must be a substantially exact representation of the mark in the foreign registration; thus, they must both include a standard character claim.  See 37 C.F.R. §2.52; TMEP §§807.03(f) and 1011.01. 

 

Upon receipt of the foreign registration certificate, if it does not indicate that the mark is in standard characters, applicant will be required to (1) submit the following statement in the U.S. application:  “Under the law of the country of origin, the foreign application or registration includes a standard character claim or the equivalent,” or (2) delete the standard character claim from the U.S. application. 

 

ADVISORY – SECTIONS 1(b) AND 44(e)

 

The application specifies intent to use under Section 1(b) and a foreign registration(s) under Section 44(e) as the bases for registration.  15 U.S.C. §§1051(b) and 1126(e).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  If applicant wishes to rely solely on the foreign registration as the basis for registration, applicant must so notify the undersigned.

 

Unless applicant indicates otherwise, this Office will presume that applicant is relying on both Sections 1(b) and 44(e) as the bases for registration.  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (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.

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

 

/Mariam Aziz Mahmoudi/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 112

Tel. (571) 272-9733

Fax (571) 273-9733

 

 

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.