UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

PRIORITY 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: 8/13/2008

 

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 Jonathan F. Ariano on August 13, 2008.

 

Identification and Classification of Goods and Services

 

     Class 009

 

The applicant identified its goods as “telecommunications hardware and software.”

 

The wording in the identification of goods is indefinite and must be clarified, see below for suggestion.  See TMEP §1402.01.

 

     Class 037

 

The Class 037 services are acceptable as written.

 

     Class 042

 

The applicant identified its services as “technical support services, namely troubleshooting of telecommunications hardware and software.”

 

The wording in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Additionally, the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.

 

The applicant may adopt the following if accurate:

 

Class 009:        COMPUTER telecommunications hardware and COMPUTER TELECOMMUNICATIONS software FOR ________ (INDICATE THE FUNCTION); Telecommunications hardware and software FOR TRANSPORTING AND AGGREGATING VOICE, DATA, AND VIDEO COMMUNICATIONS ACROSS MULTIPLE NETWORK INFRASTRUCTURES AND COMMUNICATIONS PROTOCOLS

 

Class 037:        Installation, maintenance and repair of telecommunications hardware and software

 

Class 038:        TECHNICAL SUPPORT SERVICES NAMELY PROVING TECHNICAL ADVICE IN THE FIELD OF TELECOMMUNICATIONS HARDWARE AND SOFTWARE FOR TRANSPORTING AND AGGREGATING VOICE, DATA, AND VIDEO COMMUNICATIONS ACROSS MULTIPLE NETWORK INFRASTRUCTURES AND COMMUNICATIONS PROTOCOLS

 

Class 042:        Technical support services, namely troubleshooting of COMPUTER telecommunications hardware and software PROBLEMS

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 goods that are not within the scope of the goods 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.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Requirements for Combined Applications

 

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):

 

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

 

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

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Fee for Adding Additional Classes

 

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.uspto.gov/teas/index.html; or

 

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

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

The applicant has paid for 3 Classes.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

 

/CSobral/

Christina M. Sobral

Trademark Examining Attorney

Law Office 109

Phone - (571) 272 - 5703

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/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.