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: 6/2/2010

 

This letter responds to applicant’s communication filed on May 28, 2010.

 

Withdrawn matter

The following refusal is hereby withdrawn:  specimen.  TMEP §§713.02, 714.04.

 

New Issue

The request for reconsideration filed May 28, 2010, presents a new issue that must be addressed.  TMEP §715.03(b).  This non-final Office action supersedes the previously-issued final Office action dated May 5, 2010.  Accordingly, applicant must respond to all refusal(s) and/or requirement(s) set forth below within six months of the date of issuance of this Office action.  If applicant files an appeal at this time, the appeal would be considered premature.  37 C.F.R. §2.141(a); TMEP §715.03(b).

 

IDENTIFICATION (after review of specimen)

 

Applicant applied for the following wording in International Class 9: Computer software for commercial real estate loan stress test by banks and financial institutions

 

A review of the applicant’s specimen shows that the applicant’s software is available online.  Applicant must therefore clarify the nature of the software for classification and notice purposes.  Is the applicant providing the temporary use of non-downloadable software online (correctly classified in Class 42) or downloadable software (correctly classified in Class 9? The following amendments are suggested, if accurate:

 

Downloadable computer software for commercial real estate loan stress test by banks and financial institutions - in International Class 9

 

Providing temporary use of on-line non-downloadable software for commercial real estate loan stress test by banks and financial institutions -- in International Class 42

 

Identification Manual

 

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.

 

Indefinite Terms

 

Moreover, each identification must be specific and all-inclusive; therefore, applicant should refrain from using open-ended wording such as “including” or “and the like” and replace this wording with "namely" followed by the respective goods or services listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).   The identification must be specific and all-inclusive.

 

Amending Identification/Broadening Scope

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

TO EXPEDITE APPLICATION:

 

The issue(s) raised may be resolved by telephone.  The applicant may telephone the examining attorney at (571) 272-9713 or skye.young@uspto.gov, instead of submitting a written response, to expedite the application. 

 

 

/C. Skye Young/

Trademark Examining Attorney

Law Office 117

Ph: (571) 272-9713

Fx: (571) 273-9117

Em: skye.young@uspto.gov

 

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77475319) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 6/2/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77475319&doc_type=OOA&mail_date=20100602 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 6/2/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.