UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/231007
APPLICANT: Wi-Fi Alliance
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CORRESPONDENT ADDRESS: Kimberly G. Russell STEINHART & FALCONER LLP 333 MARKET ST STE 3200 SAN FRANCISCO CA 94105-2150
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: WI-FI PROTECTED ACCESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 93775-1013
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 78/231007
The following is in response to the communication received on March 12, 2004. The refusal of registration under Section 2(e)(1) is hereby withdrawn. However, in light of this action, the examining attorney has determined the following.
A. Disclaimer
The applicant must disclaim the descriptive wording "PROTECTED ACCESS" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it immediately identifies a feature of the applicant’s goods.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use PROTECTED ACCESS apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
B. Identification of Goods
The identification of goods is unacceptable as indefinite because the examining attorney is unable to determine the exact nature of the goods. The applicant must clarify the specific function(s) of the software in relation to global wireless networks. TMEP section 804.
The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order. 37 C.F.R. Section 2.74(b). 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. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services listed in the present identification.
***The examining attorney notes that, in its response to the first Office action in this case, the applicant continuously referred to its “certification program” and “certification mark.” The present application was filed for computer software and, thus, cannot be amended to a certification mark, or for services or certification activities in general.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Regards,
/Scott M. Oslick/
Trademark Examining Attorney
Law Office 108
(703) 308-9108 x117 (Telephone)
(703) 746-8108 (Fax - Official Responses Only)
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.