AMENDMENT AND RESPONSE TO MARCH 10, 2003 OFFICE ACTION FROM LAW OFFICE 102 VIA EMAIL ONLY Mark: APPLE Applicant: Apple Computer, Inc. Serial Number: 78/170,383 Trademark Law Office:
102 Examining Attorney: Dominic J. Ferraiuolo Correspondent's Reference/Docket Number: TM 7475 CERTIFICATE OF TRANSMISSION I hereby certify that this correspondence is being transmitted by electronic
mail to the United States Patent and Trademark Office on the date shown below. By: Thomas R. La Perle Title: Intellectual Property Counsel Dated: April 1, 2003 Signature: /Thomas R. La Perle/
AMENDMENT AND RESPONSE TO MARCH 10, 2003 OFFICE ACTION Dear Sirs, This is in response to a March 10, 2003 Office Action regarding the above noted application. In that Office Action, the Examining
Attorney requested clarification of the identification of services. Applicant will respond to the Examining Attorney's concerns herein. IDENTIFICATION OF SERVICES: AMENDMENT The Examining Attorney
found the wording "computer services dealing with providing access to multimedia and interactive computer products; provision of computer databases and on-line information; services relating to
downloading of information and data from the Internet" in the recitation of services unacceptable as indefinite. Applicant would like to amend the above identification to the following recitations:
1. "providing information in a wide variety of fields over computer networks and global communication networks;" This recitation has been accepted by The Office in a large number of applications,
including applications for MICROSOFT (Reg. No. 2337072), THE EVERYDAY WEB (Reg. No. 2577565), JINGAROO (Reg. No. 2507409) and SMARTPAGES (Reg. No. 2369994), among many others. Applicant believes this
recitation is appropriate and is not broader than "provision of computer databases and on-line information", which it replaces in the recitation. As such, Applicant believes this amended recitation
should be accepted by The Office. 2. "providing information concerning computers and computer software over computer networks and global communication networks" Applicant believes this recitation is
appropriately specific and is not broader than "provision of computer databases and on-line information", which it replaces in the recitation. 3. "computer services, namely, hosting web sites and
providing web site operation and management services to others." Applicant believes this recitation is appropriately specific and is not broader than "provision of computer databases and on-line
information; services relating to downloading of information and data from the Internet;" which it replaces in the recitation. 4. "providing bulletin board services and chat services by means of
computer networks and global communication networks" Applicant believes this recitation is appropriately specific and is not broader than "provision of computer databases and on-line information;
services relating to downloading of information and data from the Internet;" which it replaces in the recitation. 5. "Computer services, namely, providing search engines for obtaining data on
computer networks and global communication networks" Applicant believes this recitation is appropriately specific. It is listed in the Trademark Acceptable Identification Goods and Services Manual,
and is not broader than "provision of computer databases and on-line information; services relating to downloading of information and data from the Internet;" which it replaces in the recitation.
Given the above amendments, Applicant believes the application should now cover the following services, as amended (changes highlighted in upper case): "computer consultation, design, testing,
research and advisory services; research and development of computer hardware and software; maintenance and repair of computer software applications; updating of computer software; computer
programming services; PROVIDING INFORMATION IN A WIDE VARIETY OF FIELDS OVER COMPUTER NETWORKS AND GLOBAL COMMUNICATION NETWORKS; PROVIDING INFORMATION CONCERNING COMPUTERS AND COMPUTER SOFTWARE OVER
COMPUTER NETWORKS AND GLOBAL COMMUNICATION NETWORKS; COMPUTER SERVICES, NAMELY, HOSTING WEB SITES AND PROVIDING WEB SITE OPERATION AND MANAGEMENT SERVICES TO OTHERS; PROVIDING BULLETIN BOARD SERVICES
AND CHAT SERVICES BY MEANS OF COMPUTER NETWORKS AND GLOBAL COMMUNICATION NETWORKS; COMPUTER SERVICES, NAMELY, PROVIDING SEARCH ENGINES FOR OBTAINING DATA ON COMPUTER NETWORKS AND GLOBAL COMMUNICATION
NETWORKS; leasing of computers, computer peripherals and computer software;" CONCLUSION Applicant believes it has addressed all the issues presented in the above noted Office Action (which has also
been copied below for ease of reference). Applicant believes the Application is now in condition for publication, and action toward that end at an early date is earnestly solicited. If the Examining
Attorney has any questions, and if a telephone conversation can speed the application to registration, Applicant invites the Examining Attorney to contact Applicant at the below phone number.
Respectfully submitted, /Thomas R. La Perle/ __________________________________ Thomas R. La Perle Intellectual Property Counsel Apple Computer, Inc. 1 Infinite Loop, MS: 3TM Cupertino, California
95014 Phone: 408-974-2385 Fax: 408-253-0186 > From: ecom102@USPTO.GOV > Date: Mon, 10 Mar 2003 07:48:47 -0500 > To: laperle@apple.com > Subject: TRADEMARK APPLICATION NO. 78170383 - APPLE
> > UNITED STATES PATENT AND TRADEMARK OFFICE > > > SERIAL NO: 78/170383 > > APPLICANT: Apple Computer, Inc. > > > > > > CORRESPONDENT ADDRESS: > Thomas R.
La Perle > Apple Computer, Inc. > 1 Infinite Loop MS: 3TM > Cupertino CA 95014 > > RETURN ADDRESS: > Commissioner for Trademarks > 2900 Crystal Drive > Arlington, VA
22202-3513 > ecom102@uspto.gov > > > > > MARK: APPLE > > > > > CORRESPONDENT'S REFERENCE/DOCKET NO: N/A > > CORRESPONDENT EMAIL ADDRESS: > laperle@apple.com
> Please provide in all correspondence: > > 1. Filing date, serial number, mark and > applicant's name. > 2. Date of this Office Action. > 3. Examining Attorney's name and > Law
Office number. > 4. Your telephone number and e-mail address. > > > > > OFFICE ACTION > > > TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE >
ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. > > > Serial Number 78/170383 > > The assigned examining attorney has reviewed the referenced application and > determined
the following. > > > Identification of Services Unacceptable-Indefinite in Part > > The wording "computer services dealing with providing access to multimedia > and interactive
computer products; provision of computer databases and > on-line information; services relating to downloading of information and > data from the Internet" in the recitation of services is
unacceptable as > indefinite. The applicant must amend the recitation to further specify the > common commercial name of these services and to further indicate their > nature. The applicant
should note that "access" services generally provide > telecommunications connections and communications access and are in Class > 38, for example, "providing a high speed access to area
networks and a > global computer information network." Information services are classified > according to the subject matter of the information, which must be specified > in the
identification of the service, for example, providing online > information about computer hardware and software via the Internet, in Class > 42. TMEP §1402.11. > > Please note that, while
an application may be amended to clarify or limit > the identification, additions to the identification are not permitted. 37 > C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not
amend to > include any services that are not within the scope of the services recited > in the present identification. > > The application identifies services that may be classified in
several > international classes. Therefore, the applicant must either: (1) restrict > the application to the number of class(es) covered by the fee already paid, > or (2) pay the required
fee for each additional class(es). 37 C.F.R. > §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. > > Effective January 1, 2003, the fee for filing a trademark application is >
$335 for each class. This applies to classes added to pending applications > as well as to new applications filed on or after that date. 37 C.F.R. > §2.6(a)(1). > > If the applicant
prosecutes this application as a combined, or > multiple-class, application based on use in commerce under Trademark Act > Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each
of the > following: > > (1) The applicant must specifically identify the services in each class and > list the services by international class with the classes listed in > ascending
numerical order. TMEP §1403.01. > > (2) The applicant must submit a filing fee for each international class of > services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and >
2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for > filing a trademark application is $335 for each class. This applies to > classes added to pending applications as
well as to new applications filed > on or after that date. > > (3) The applicant must submit: > > (a) dates of first use and first use in commerce and one specimen for each > class
that includes services based on use in commerce under Trademark Act > Section 1(a). The dates of use must be at least as early as the filing date > of this application, 37 C.F.R. §§2.34(a)(1)
and 2.86(a), and the specimen(s) > must have been in use in commerce at least as early as the filing date of > the application, and/or > > (b) a statement of a bona fide intention to use
the mark in commerce on or > in connection with all the services specified in each class that includes > goods or services based on a bona fide intention to use the mark in commerce > under
Trademark Act Section 1(b), where such statement was not included for > the goods or services in the original application. > > (4) The applicant must submit an affidavit or a declaration
under 37 C.F.R. > §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and > 2.71(c). > > The examining attorney has searched the Office records and has found no >
similar registered or pending mark which would bar registration under > Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. > If the applicant has any questions or needs assistance in
responding to this > Office action, please telephone, e-mail or fax the assigned examining > attorney. > > > > /DominicJFerraiuolo/ > Trademark Examining Attorney > Law Office
102 > e-mail: ecom102@uspto.gov > (703) 308-9102 ext. 174 > fax: (703) 746-8102 > > Fee increase effective January 1, 2003 > Effective January 1, 2003, the fee for filing an
application for trademark > registration will be increased to $335.00 per International Class. The > USPTO will not accord a filing date to applications that are filed on or > after that
date that are not accompanied by a minimum of $335.00. > > Additionally, the fee for amending an existing application to add an > additional class or classes of goods/services will be
$335.00 per class for > classes added on or after January 1, 2003. > > How to respond to this Office Action: > > To respond formally using the Office's Trademark Electronic Application
> System (TEAS), visit http://www.gov.uspto.report/teas/index.html > and follow the instructions. > > To respond formally via E-mail, visit >
http://www.gov.uspto.report/web/trademarks/tmelecresp.htm > and follow the > instructions. > > To respond formally via regular mail, your response should be sent to the > mailing Return
Address listed above and include the serial number, law > office and examining attorney's name on the upper right corner of each page > of your response. > > To check the status of your
application at any time, visit the Office's > Trademark Applications and Registrations Retrieval (TARR) system at > http://tarr.gov.uspto.report/ > > For general and other useful information
about trademarks, you are > encouraged to visit the Office's web site at > http://www.gov.uspto.report/main/trademarks.htm > > > FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE
CONTACT THE > ASSIGNED EXAMINING ATTORNEY. >