Offc Action Outgoing

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  77/007852

 

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

Search Statement

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.

 

Identification of Goods and Services and Classification

International Class 9

The identification of goods and/or services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.  

 

The wording “other physical media for storing digital information” in the identification of goods is indefinite and must be clarified because it does not indicate the specific type of physical media.  TMEP §1402.01.

 

The wording “a wide variety of subject matters and a wide variety of subjects ” in the identification of goods is indefinite and must be clarified because it does not identify the specific subjects, such as health.  TMEP §1402.01.

 

International Class 16

The wording “printed reference material relating to advice, instruction and other tips and helpful information provided to assist individuals in accomplishing a variety of practical tasks” in the identification of goods is indefinite and must be clarified because it does not indicate the specific type of printed material nor the specific type of practical tasks.  An example of an acceptable identification of goods is the following:  printed reference material, namely list items, e.g. books relating to advice, instruction and other tips and helpful information provided to assist individuals in accomplishing a variety of practical tasks, namely cleaning.  TMEP §1402.01.

 

The wording “printed reference material, other printed material and printed reference, instructional and information material” in the identification of goods is indefinite and must be clarified because it does not indicate the specific type of material.  TMEP §1402.01.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Furthermore, the identification of goods is indefinite and must be clarified because it includes the open-ended wording “including.”  TMEP §§1402.01 and 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

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).

 

The wording “wide variety of practical subjects” and “a wide range of general topics” in the identification of goods is indefinite and must be clarified because it does not indicate the specific subject matter of the information that the goods provide.  TMEP §1402.01.

 

International Class 35

The wording “promoting and facilitating the sale of the goods and services of others by providing an interactive computer site for the sale of a wide variety of business goods and services” in the identification of services is indefinite and must be clarified because it is unclear.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  business services, namely providing computer databases regarding the purchase and sale of a wide variety of products and services of others.

 

International Class 38

The wording “wide variety of subjects” in the identification of services needs clarification because it does not indicate the specific subject matter of the forums.  TMEP §1402.01.

International Class 41

The wording “instructional services featuring practical information on a wide range of subjects provided in printed form” in the identification of services needs clarification because it does not appear to be services but rather printed material.  Furthermore, it does not indicate the specific subject matter of the printed material.  An example of an acceptable identification of goods is the following:  printed material, namely list type of printed material e.g. books featuring practical information in the field of health.  TMEP §1402.01.

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Class 16.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

The wording “instructional services, namely providing practical information through local or global communication networks, wireless networks, telephone lines, satellite, cable television and radio transmission” in the identification of services is indefinite and must be clarified because it is unclear and does not indicate the specific subject matter of the educational services.  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).  An example of an acceptable identification of services is the following:  educational services, namely, conducting on-line exhibitions and displays and interactive exhibits in the field of indicate subject matter or field.

 

The wording “informational services” in the identification of services is indefinite and must be clarified.  TMEP §§1402.01 et seq. 

 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” -- International Class 35; “providing information regarding financing and insuring an automobile” -- International Class 36; and “providing information regarding the repair and maintenance of automobiles-- International Class 37.  If the information is provided online or via a website, this information should also be included in the identification of services, e.g., “providing health care information online” in International Class 44.

 

Therefore, in order to enable proper classification and examination of the application, applicant must specify the subject matter of the “information” services. 

 

International Class 42

The wording “providing an on-line database containing protocols” in the identification of services is indefinite and must be clarified because it is unclear.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  providing an on-line computer database in the field of indicate specific service-related field.

 

The wording “wide range of subjects” in the identification of services needs clarification because it does not indicate the specific subject matter of the subjects.  TMEP §1402.01.

Online computer databases are classified according to the subject matter of the information provided.  TMEP §1402.11(b).    Therefore, in order to enable proper classification and examination of the application, applicant must specify the subject matter of the “information” services. 

 

The wording “computer services, namely, providing concise practical advice and information to consumers and world wide web users concerning a wide variety of every day situations and problems, by means of a global computer network” in the identification of services is indefinite and must be clarified because the wording is unclear and does not indicate the specific subject matter of the advice and information.  TMEP §1402.01.  An example of an acceptable identification of services is the following:  providing indicate subject matter  information online.

 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Therefore, in order to enable proper classification and examination of the application, applicant must specify the subject matter of the “information” services. 

 

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://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

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

 

Requirements for Multiple Classes – If Applicable

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 in commerce under Trademark Act Section 1(b); a foreign registration under Trademark Act Section 44(e); an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or 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/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

 

 

 

/esther borsuk/

Esther Borsuk

Examining Attorney

Law Office 112

Phone:  (571) 272-9131

Fax:  (571) 273-9112

 

 

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.