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: 4/5/2010

 

THIS IS A FINAL ACTION.

 

This final Office action is a response to applicant’s communication filed February 12, 2010.

 

STATUS

 

In a first Office action dated November 29, 2009, the examining attorney required applicant to amend the identification of services, fulfill the requirements for a combined application, if necessary, and disclaim the term IT.  In its response, applicant 1) Amended the identification of services; and 2) Disclaimed IT.  Number 2 is acceptable.

 

IDENTIFICATION REQUIREMENTS ARE MADE FINAL

 

The following identification requirements are now made FINAL.  See37 C.F.R. §2.64(a).

 

The identification is indefinite and must be clarified.  The identification still appears to identify software; in the original identification this read “providing . . . software solutions” and, as amended, it reads “providing technology platform software solutions.”  To say that one is “providing software” means either that one is providing the temporary use of on-line software, which is a Class 42 service, or that the mark identifies a good, that is, the software itself, either in physical form or in downloadable form, which is a Class 9 good.  In its response, applicant stated that it is not providing the temporary use of non-downloadable software.  Applicant must, therefore, clarify that “providing . . . software solutions” refers to a Class 9 good and comply with the requirements for a combined application or, in the alternative, delete the software from the identification.   In clarifying the meaning of this identification, applicant should avoid the use of the vague term “solutions.”  In addition, as stated in the first Office action, applicant must provide the function of the software rather than simply identifying its field of use.  If the technical support services are in the nature of troubleshooting, this must be clarified; as written, the nature of the services is not clear.  “Software application development support services” is outside the scope of the original identification, which was “software development services.”  “Software testing services” is outside the scope of the original identification.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  

 

“Computer software platforms for [provide the specific function of the software] in the field of business process outsourcing,” in International Class 9.

 

“Computer software consultation in the field of implementing, extending, upgrading, and maintaining software products; information technology technical support services, namely, troubleshooting of enterprise application software problems and troubleshooting of database applications; computer software development services,” in International Class 42.

 

Although identifications of goods or services may be amended to clarify or limit the goods or services, adding to or broadening the scope of the goods or 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 goods or services that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods 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.

 

The requirement is maintained and made FINAL.

 

COMBINED APPLICATION REQUIREMENTS ARE MADE FINAL

 

The following requirements are now made FINAL.  See37 C.F.R. §2.64(a).

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

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

 

(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); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

(a)        Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)        One specimen showing the mark in use in commerce for each class of goods and/or services.  The specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.;

 

(c)        The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)        Verification of the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above for a specimen for each class of goods and/or services, please note that the specimen of record is acceptable for International Class 42 only.  Applicant must submit additional specimens if other classes are added to the application.

 

The requirement is maintained and made FINAL.

 

PROPER RESPONSE TO A FINAL OFFICE ACTION

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

QUESTIONS

 

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

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

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. 77805741) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 4/5/2010 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=77805741&doc_type=OOA&mail_date=20100405 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 4/5/2010 (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.