Priority Action

OFFICE SEARCH: The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 704.02.

The following issues were discussed in communication with Julie Shirk on January 7, 2008.

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

Identification of Goods:

The identification of goods contains language that requires clarification and/or is overly broad, potentially encompassing goods in classes other than those currently included in the application. TMEP §§1402.01 and 1402.03. In the identification, 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). If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

Specifically, the word “system” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system. Applicant should use common generic terms when specifying the parts or components of the system. TMEP §1402.03.

Applicant may adopt the following identification, if accurate. Suggestions are in boldface italics, and the matter in braces { } or brackets [ ] is explanatory material:

International Class 9 – Electronic health record interoperability testing software system, namely, computer software for testing the interoperability of electronic health records to ensure that the information contained therein can be {specify nature of software, e.g., it allows the records to be viewed/retrieved/etc., in multiple formats/across different platforms/etc.}

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

Translation of Mark:

Applicant must submit an English translation of the mark. 37 C.F.R. §2.61(b); TMEP §809. The following translation statement is suggested:

The English translation of “LAIKA” in the mark is “BARKER.”

General Inquiry on Significance:

Applicant must specify whether “LAIKA” has any significance in the trades or industries relevant to the goods/services described in the application, any meaning as applied to the goods/services described in the application, any geographical significance, or any meaning in a foreign language other than that noted above. 37 C.F.R. §2.61(b).

TEAS Response Suggested:

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, please telephone the assigned trademark examining attorney directly at the number below.

James W. MacFarlane

/James W. MacFarlane/

Trademark Examining Attorney

Law Office 104

Phone: 571-270-1512

Fax: 571-270-2512

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 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.