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  77/010468

 

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

 

Search Results

 

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.

 

No Basis Indicated

 

Applicant has not specified a filing basis for the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §2.32(a)(5); TMEP §806.  An application may be filed based on any of the following:

 

(1)    Use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

 

(2)    A bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

 

(3)    A claim of priority, based on an foreign application filed within six months of the filing date of the U.S. application, under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c)); and/or

 

(4)    A foreign registration of a mark in applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)).

 

Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.  TMEP §806. 

 

Depending on the circumstances, applicant may be entitled to assert more than one of the above bases for filing.  In such a case, applicant must:  (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. §2.34; TMEP §§806.02 et seq.

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce and intent to use for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Requirements for an Application Based on Section 1(a): Use in Commerce

 

An application based on use of the mark in commerce must include the following:

 

(1)   The following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date”;

 

(2)   The date of first use of the mark anywhere on the goods or in connection with services;

 

(3)   The date of first use of the mark in commerce as a trademark or service mark;

 

(4)   One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce).  If a specimen was not submitted with the initial application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date.”

 

(5)   Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20 and 2.33, of the above statements and dates of use. 

 

15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

Requirements for an Application Based on Section 1(b): Intent-to-Use

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

Requirements for an Application Based on Section 44(d): Foreign Application for the Same Mark

 

An application based on a foreign application for the same mark and the same goods or services must include the following:

 

(1)   A “claim of priority,” that is, the U.S. application was filed within six months of the filing date of the foreign application.

 

(2)   The filing date and foreign country of the first regularly filed foreign application (“regular national filing” means “any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application,” Paris Convention for the Protection of Industrial Property, art. 4); or state that the U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority;

 

(3)   The serial number of the foreign application upon which the priority claim is based; and

 

(4)   The following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 

 

15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c).

 

Requirements for an Application Based on Section 44(e):  Foreign Registration for the Same Mark

 

An application based on a foreign registration must include the following:

 

(1)   A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant’s country of origin.  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 extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002 et seq. and 1004.01 et seq.

 

(2)   An English translation of the foreign registration if the foreign certificate of registration is not written in English.  The translator should sign the translation.  TMEP §1004.01(b).

 

(3)   The following statement, verified in an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services as of the application filing date.” 

 

15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Identification of Goods and Services

 

The wording, “computer software forming an enterprise class software platform specifically designed to support the operation of rich media workflow applications,” in the identification of goods is indefinite because applicant must clarify that its computer software is for forming an enterprise class software platform specifically designed to support the operation of rich media workflow applications. TMEP §1402.01.  The wording, “computer software design, computer programming, or maintenance of computer software” in the identification of services is indefinite and must be clarified because applicant must specify that applicant’s services are for others and applicant must delete the indefinite term “or.”  TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

“computer software for scheduling programming and advertising for use by both television stations and cable channel providers; computer software for use in billing for advertising time and for use in connection with production services in audio/visual programming and signal dissemination operations by television stations, cable channel providers and other programming providers; Computer software for controlling and automating the operation of single or multiple digital video/audio channel streams, creating and modifying playlists, mixing digital video/audio sources, storing and controlling video/audio content and video/audio content feed ingestion for television stations, cable channels, video-on-demand and other programming providers; Computer software for forming an enterprise class software platform specifically designed to support the operation of rich media workflow applications,” in Class 009; and

 

“computer software design for others, computer programming, and maintenance of computer software,” in Class 042.

 

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.

 

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.

 

Significance of Lettering

 

Applicant must specify whether the letters “VCI” have any significance in the computer trade or industry or as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).

 

Response Guidelines

 

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.

 

/margaretpower/

Examining Attorney

Law Office 103

margaret.power@uspto.gov

Phone 571-270-1507

Fax 571-273-1507

 

 

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.