Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

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

 

The examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

PRIOR PENDING APPLICATION

The examining attorney encloses information regarding pending Application Serial No. 78629030.  The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

SERVICES INDEFINITE – Class 35, 38, 41 and 45

The recitation of services is unacceptable as indefinite.  TMEP section 1402.01.  The applicant may adopt the following recitation, if accurate:

 

IC 009: Computer software for web messaging, instant messaging, electronic mail and transmission of voice, data, images, audio, video, multimedia and messages; Computer software for creating and publishing on-line journals; Computer software and computer software platforms which allow users to build and access social network information including address book, friend lists, profiles, preferences and personal data

            IC 035: Providing on-line computer databases and on-line searchable databases featuring classified ad listings and employment opportunities; promoting the goods and services of others over the Internet; providing a web site that enables users to post goods and services for sale through on-line classified advertisements; Computer services, namely, providing reviews, recommendations and information on consumer products and services via a global computer network [NOTE: the wording “online content” is overly broad, as it may relate to information on a vast variety of subject matters;  also, the term “information” need not be repeated];   providing an online searchable directory of people which allows users to find people of related interests[NOTE: this service has been reclassified]   

IC 038: Voice over IP services; Web conferencing services; Video teleconferencing; Electronic mail services; Web messaging; Wireless and Mobile text and multimedia SMS and MMS messaging services; Instant messaging services; Electronic, electric, and digital transmission of voice, data, images, audio, video, multimedia and messages; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; Providing on-line chat rooms for transmission of messages among computer users concerning any event or content on the web; and virtual chatrooms established via text messaging [NOTE: the wording “storage, backup, protection and synchronization of voice, data, images, audio, video and multimedia messaging” requires clarification and appropriate classification]

            IC 041: Electronic publishing and syndication services, namely, publication of text, audio, video and graphic works online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; [NOTE: on-line reviews, recommendations and information on consumer “products and services” is appropriately classified in international class 35; the wording “online content” is indefinite]

            IC 042: Online hosting of data and digital content for others; Computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; Application service provider (ASP) featuring software for web messaging, instant messaging, electronic mail, transmission of voice, data, images, audio, video, multimedia and messages, software for creating and publishing on-line journals, and software which allows users to build and access social network information including address book, friend lists, profiles, preferences and personal data

            IC 045: Online social networking services, [NOTE: the online database service has been reclassified in class 35]

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below:

 

1)         Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.

 

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.

 

RESPONSE GUIDELINES

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (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.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

 

David Taylor /dtt/

Trademark Examining Attorney

Law Office 112

Phone 571-272-9420

Fax 571-273-9420

 

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.