Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  78/231007

 

The following is in response to the communication received on August 16, 2004.  The certification mark form is accepted.  However, for the reasons stated below, the requirement that applicant disclaim the descriptive wording PROTECTED ACCESS is hereby continued and made FINAL.  The requirement that applicant amend the identification of goods is hereby continued and made FINAL.

 

A.                Disclaimer

 

As stated in the second Office action in this case, 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 function or feature of the underlying goods that applicant is certifying.  Specifically, one important component of a wireless internet network is secure, or “protected,” access to the network.  The need for this disclaimer is not obviated by applicant’s amendment of the application to seek registration of the mark as a certification mark.

 

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 wording SOFTWARE SOLUTIONS would appear to refer to services, not goods.  The applicant may adopt the following identification, if accurate:  “Computer software, namely, global wireless software.”  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.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.  The examining attorney notes that the amendments required in this Office action may be made online.

 

My Law Office will move on  November 2, 2004.  To reach me by phone after that date call (571) 272-9348. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9108.

 

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.

 

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.