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: 7/30/2008

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Identification and Classification of Services – Amendment Required

THIS REQUIREMENT APPLIES ONLY TO INTERNATIONAL CLASS 42.

 

The wording used to describe the Class 9 goods and Class 36 services is accepted and made part of the record.  However, all of the wording in the identification of Class 42 services is indefinite and must be clarified.  See TMEP §1402.01.  Specifically, the wording “providing a computer system,” “providing online technical and customer support,” and “providing online customer technical support” in Class 42 is indefinite because it is unclear as to the basic nature of the services, e.g., providing temporary use of non-downloadable software, customer service, technical support in the nature of troubleshooting computer problems, etc.  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). 

 

In addition, the wording “customer support” is too broad because it could include customer service  services in International Class 35.  See TMEP §§1402.01, 1402.03.  The identification of services must be specific and all-inclusive.

 

The suggested amendments are noted below in bold typeface.  Applicant may adopt any or all of the following identification of goods and services, if accurate: 

 

“Computer software enabling real time and simultaneous multi-user creation, revision, tracking, production, categorization, modification and storage of the environmental impacts and costs of workplace assets, facilities, real estate, and operations through a local area network, wide area network, or global computer network; computer software enabling connection to and operation of a marketplace through a global computer network enabling the measurement, management and reduction of environmental impacts and costs of workplace assets, facilities, real estate, and operations,” in International Class 9. 

 

“Computer services, namely, providing online customer service in the field of operation of a database which allows real time and simultaneous multi-user creation, revision, categorization, tracking, and production of the environmental impacts and costs of workplace assets, facilities, real estate and operations through a local area network, wide area network and global computer network; computer services, namely, providing online customer service in the field of operation of marketplace existing through a local area network, wide area network, or global computer network which measures, manages and reduces the environmental impacts and costs of workplace assets, facilities, real estate, and operations,” in International Class 35.

 

“Providing information via a global computer network on the subject of non-residential building and facilities management,” in International Class 36.

 

“Computer services, namely providing temporary use of non-downloadable computer software which allows real time and simultaneous multi-user creation, revision, categorization, tracking, production, measurement, management and reduction of the environmental impacts and costs of workplace assets, facilities, real estate and operations through a local area network, wide area network, or global computer network; computer services, namely providing online customer technical support in the nature of troubleshooting computer software problems related to the operation of a database which allows real time and simultaneous multi-user creation, revision, categorization, tracking, and production of the environmental impacts and costs of workplace assets, facilities, real estate and operations through a local area network, wide area network and global computer network; computer services, namely providing online customer technical support in the nature of troubleshooting computer software problems with respect to the operation of marketplace existing through a local area network, wide area network, or global computer network which measures, manages and reduces the environmental impacts and costs of workplace assets, facilities, real estate, and operations,” in International Class 42.

 

See TMEP §1402.01.

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.

 

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.  See TMEP §1402.04.

 

Combined Application Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and services, applicant must submit:

 

a.   Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

b.   One specimen showing use of the mark for each class of goods and services; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

c.   A statement that “the specimen was in use in commerce on or in connection with the goods and services listed in the application at least as early as the filing date of the application;” and

 

d.   Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Applicant has paid sufficient fees for three (3) International Classes, and the specimen of record is acceptable for International Class 42 only.

 

Specimen Refusal

THIS REFUSAL APPLIES ONLY TO INTERNATIONAL CLASSES 9 AND 36.

 

The specimen submitted for the International Class 42 “computer system” services is accepted and made part of the record.  However, applicant has not provided any specimens showing the applied-for mark used in connection with either the Class 9 goods or Class 36 services specified in the application.  An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and services based on Section 1(a) in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04. 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of goods and services specified in the application; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a). 

 

Advisory:  Amending the Filing Basis

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “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.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

 

Advisory:  Sample Declaration for a Substitute Specimen

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

/Carrie Genovese/

Examining Attorney

Law Office 115

(571) 272-8378

(571) 273-9115

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/30/2008 FOR

APPLICATION SERIAL NO. 77447954

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77447954&doc_type=OOA&mail_date=20080730 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/30/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.