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  77/004341

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Prior Pending Application

 

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.

 

 

Information regarding pending Application Serial No. 78454125 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.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

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.

 

Identification Of Services

 

The identification of services is unacceptable as indefinite because some of the terms are overly broad so that the services are vague and could fall into a different international class.  Specifically building security services and safety inspection services are in class 045.  The phrase “relating to” is overly broad as is the phrase “consultation and advice in connection with the aforesaid services.”  When an applicant has submitted an unacceptable identification of services, it is Office practice to suggest acceptable substitute wording.  In many instances, however, the trademark examining attorney is unable to suggest substitute wording because the nature of the services is unclear from the application record.  For example the examining attorney is unable to provide suggestions for contract management and advisory services relating to removals. TMEP §1402.01(e).  Suggestions and explanations are incorporated into the identification proposed below.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

 

International 035:

 

Personnel management consultation; consultancy with regard to business management; business management consultancy; corporate management consulting services; personnel management consultancy; facilities management, namely {must indicate what type of facilities management e.g. facilities management of technical operations}; administration {must indicate what is being administered e.g. business administration consultancy, business administration and management}; business management; personnel management; recruiting {must indicate type of recruiting e.g. employment};  Advisory services relating to personnel recruitment and movement, namely consultancy of personnel recruitment;  management advice relating to the movement, recruitment and retaining of staff, namely personnel placement and recruitment;  auditing

{must indicate the specific type of auditing e.g. account, business}; moving and relocation services, namely planning and implementing moves of offices

 

International Class 039:

 

Advisory services relating to removals, namely {must indicate with more specificity what specifically is being moved and what the advisory services entail}; provision and arrangement of removal services, namely {must specify specifically what is being removed and the exact nature of the removal services}

 

International Class 042:

 

Interior space planning services; space planning and design of interiors namely design of specialty interior settings; consultancy services relating to health and safety namely {must specify specifically what the consultancy services entail}; building fabric design namely {must indicate more specifically what is meant by fabric design e.g. interior fabric}; contract management, {must indicate what types pf contract are being managed}; office design and space planning

 

International Class 045:

 

Consultation services in the field of building security; inspection of factories for safety purposes

 

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

For assistance with identifying 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.

 

 

Multiple Class Requirements

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies services that are classified in at least 4 international classes, however applicant paid the fee for only 3 classes.

 

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, 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 services by international class with the classes listed in ascending numerical order; 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). 

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

 

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.

 

 

 

 

/David I/

David I

Law Office 114

Telephone: (571) 270-1526

Fax: (571) 270-2525

 

 

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.