Offc Action Outgoing

DOMINION

Telogis, Inc.

TRADEMARK APPLICATION NO. 77526904 - DOMINION - N/A

To: Darby Corporate Solutions, Inc. (vhandal@salonmarrow.com)
Subject: TRADEMARK APPLICATION NO. 77526904 - DOMINION - N/A
Sent: 11/12/2008 1:13:05 PM
Sent As: ECOM112@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

 

    SERIAL NO:          77/526904

 

    MARK: DOMINION          

 

 

        

*77526904*

    CORRESPONDENT ADDRESS:

          VINCENT J. HANDAL, JR.     

          SALON MARROW DYCKMAN NEWMAN & BROUDY LLP

          800 CORPORATE DR STE 208

          FORT LAUDERDALE, FL 33334-3618           

           

 

RESPOND TO THIS ACTION:

http://www.gov.uspto.report/teas/eTEASpageD.htm

 

GENERAL TRADEMARK INFORMATION:

http://www.gov.uspto.report/main/trademarks.htm

 

 

    APPLICANT:           Darby Corporate Solutions, Inc.       

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:  

          N/A        

    CORRESPONDENT E-MAIL ADDRESS: 

           vhandal@salonmarrow.com

 

 

 

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: 11/12/2008

 

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

 

SEARCH RESULTS – NO SIMILAR REGISTERED OR PENDING MARKS

 

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.

 

CLARIFICATION OF THE RECITATION OF SERVICES

 

As filed, the identification of services appears as follows:

 

International Class (unspecified): a web-based tracking service designed to track the whereabouts of business assets (namely, vehicles, personnel and inventory) utilizing as global positioning system (GPS) device

 

The above-bolded wording in the identification of services is indefinite and must be clarified because it does not adequately specify the particular nature of applicant’s services.  See TMEP §1402.01.  It is also too broad and includes services in more than one International Class.  Further, the identification of goods and/or services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.

 

Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.  However, please note that the use of the informational parenthetical “(GPS)” in the identification is acceptable.  The other parenthetical information must be incorporated into the description.

 

Applicant may substitute the following wording, if accurate: 

 

  • International Class 035: Providing web-based tracking services using global position system (GPS) devices, namely, tracking business assets in the nature of vehicles, personnel, and inventory for commercial purposes.

 

  • International Class 045: Providing web-based tracking services using global position system (GPS) devices, namely, tracking business assets in the nature of vehicles, personnel, and inventory for security purposes.

 

Please note that the purpose for which applicant’s services are offered impacts classification here.  Specifically, tracking for general commercial purposes will fall into International Class 035, but tracking for security purposes falls into International Class 045.

 

Identifications of services can be amended only 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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

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).

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

 

 

/Kevin S. Corwin/

Trademark Examining Attorney

Law Office 112

Phone - (571) 270-1521

Fax No - (571)270-2521

 

 

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.

 

 

 

 

 

TRADEMARK APPLICATION NO. 77526904 - DOMINION - N/A

To: Darby Corporate Solutions, Inc. (vhandal@salonmarrow.com)
Subject: TRADEMARK APPLICATION NO. 77526904 - DOMINION - N/A
Sent: 11/12/2008 1:13:08 PM
Sent As: ECOM112@USPTO.GOV
Attachments:

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 11/12/2008 FOR

APPLICATION SERIAL NO. 77526904

 

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=77526904&doc_type=OOA&mail_date=20081112 (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 11/12/2008.

 

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.

 

 

 


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