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: 11/19/2009

 

 

Upon further review, the examining attorney has determined there are additional objections against Class 42 of this application.  The examining attorney was notified of this issue pertaining to applicant’s co-pending application, SETTING POSSIBILITIES IN MOTION, Serial No. 77530383.  As such, the examining attorney is issuing this Office Action as a preventative measure, so that applicant does not have to deal with this Class 42 issue later as it pertains to its three applications, 77577893, 77577887 and 77577900.

 

Please see details below.  The examining attorney apologizes for any inconvenience this may have caused.  The requirements noted in the November 9, 2009 Office Action are maintained and continued. 

 

The application has been queried by the Commissioner’s Office because of an issue with the Class 42 identification of services.  Once the issue is resolved, the application will be re-approved for publication in the next available Official Gazette. 

 

Technical consulting is in the class of the subject matter of the consulting.  In this case, the identification specifies “mining and construction,” among others, which are actually Class 37 services.  In addition, the subject matter is identified as “environmental,” which is overly broad and vague.  Is it “environmental protection” or “environmental testing,” or “environmental science,” all of which are in Class 42? is indefinite.

 

Furthermore, as a general rule, the term technical support part of "technical consulting and support" is indefinite.  There are certain technical support services that are in Class 42 and others in Class 37 or 40.  Examples of Class 42 include:  Technical support services, namely {troubleshooting of computer software problems; troubleshooting in the nature of diagnosing problems with equipment in the {INDICATE industry}.  Examples in Class 37 include:  technical support services, namely {troubleshooting in the nature of repair, maintenance of equipment in the {INDICATE industry}.  Examples in Class 40 include:  Technical support services, namely providing technical advice related to the manufacture of {INDICATE goods being manufactured}. 

 

 

 

RESPONSE GUIDELINES 

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

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.

 

 

 

 

 

Giselle M. Agosto

/Giselle M. Agosto/

Trademark Attorney Advisor

Law Office 102

Phone:  (571) 272-5868

Fax: (571) 273-9102

 

 

 

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. 77577887) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 11/19/2009 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=77577887&doc_type=OOA&mail_date=20091119 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 11/19/2009 (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.