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: 2/2/2010

 

THIS IS A FINAL ACTION.

 

Applicant’s response filed January 8, 2010, is acknowledged by this final office action.  Applicant’s amendment to class 9 is acceptable.  However, the amendment to class 41 is unacceptable.  Please be advised that the refusal has been withdrawn.

 

Abandonment of Services

 

If applicant should fail to respond to this Office action within the six month time limit, then the services subject to further clarification will be deleted from the application.  The application will then proceed with acceptably stated services only.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Identification of Services

 

The wording “information services” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  The wording “providing information in the field of automobiles” is too broad and may include several classes of services. 

 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classifications:  “providing information pertaining to purchasing an automobile” in International Class 35; “providing information regarding financing and insuring an automobile” in International Class 36; and “providing information regarding the repair and maintenance of automobiles” in International Class 37.

 

If the information is provided online or via a website, this information should also be included in the identification of services, e.g., “providing online information in the field of health care information” in International Class 44.

 

Therefore, to enable proper classification and examination of the application, applicant must specify the subject matter of the “information services” not simply indicate the field which may encompass many classes of different services.  Applicant must amend certain wording as indicated below.  See TMEP §1402.01.

 

“series of pre-recorded electronic media, namely, DVDs, compact discs, video discs, CD-ROMs, and downloadable digital video and audio files featuring entertainment and educational topics relating to history, culture, wildlife, nature, exploration and adventure” in International Class 9;[ACCEPTABLE]

 

“production of television programs; production and distribution of cable television programs for others; entertainment services in the nature of an on-going television series featuring non-fiction content, namely, science, natural history, natural science, geography, the environment, geology, anthropology, zoology, botany, social studies, history, world cultures, news stories, and games, provided through television and webcasts; entertainment services, namely, production, distribution and rental of motion picture films featuring non-fiction content, namely, news stories, music, comedy or drama;

 

providing [specify type of information for each field and classify accordingly] information via a global communications network in the fields of science [science as it relates to [specify application and classify in proper class], natural history, natural science, geography [specify “as it related to travel” in class 39], the environment [wording too broad—acceptable format is as follows: “providing statistical information in the field of the environment for business or commercial purposes” in class 35], geology [specify application and classify], anthropology [specify application and classify], zoology [specify further the nature of information], botany [specify further the nature of information], social studies [specify further the nature of information], history [specify further the nature of information], world cultures [specify further the nature of information], news stories [wording too broad—may adopt “news stories of current events”], and games [term is too broad and indefinite]” International Class 41.

 

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.

 

If applicant adds a class to the 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Final Options

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

/Christopher L. Buongiorno/

Christopher L. Buongiorno

Law Office 102

(571) 272-9251

 

 

 

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. 77713806) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 2/2/2010 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=77713806&doc_type=OOA&mail_date=20100202 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 2/2/2010 (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.