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  78/257825

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks Noted

 

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.

 

Identification of Goods in International Class 9

 

The following is required regarding the identification of the goods with which the applicant has asserted a bona fide intention to use the mark.

 

Some of the wording in the identification of goods is unacceptable as indefinite, as indicated below.  The applicant must amend the identification to specify the commercial name of the goods and/or the industry or field in which the goods are used, as indicated below in the suggested identification.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 1402.

 

It is the applicant's duty and prerogative to identify the goods and services.  TMEP Section 1402.01(d).  The identification of goods or services should be clear, accurate and as concise as possible.  See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).  Furthermore, the identification of goods and services must be specific and definite.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).  TMEP Section 1402.01.

 

The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1402.04.

 

The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO’s “homepage” on the Internet, which can be accessed at http://www.uspto.gov.  The Manual may also be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600).  See notice at 1190 TMOG 67 (Sept. 17, 1996). In addition, the Manual is available in hard-copy on a subscription basis from the Government Printing Office.  TMEP Section 1402.04.

 

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(b); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The applicant may adopt the following identification of goods, if accurate: 

 

“Computer software for application and database integration; and computer software [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.] in the fields of business management and process control,” in International Class 9.

 

Status Line

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

If the applicant's attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Alec Powers/

Trademark Examining Attorney

US Patent and Trademark Office

Law Office 105

Phone: 703-308-9105 x 187

Fax: 703-872-9825

 

 

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.