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  78/283048

 

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

 

Search

 

The examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  However, the examining attorney has found the following potentially conflicting applications.  TMEP section 1105.01.

 

Prior Pending Applications

 

The examining attorney encloses information regarding pending Application Serial Nos. 76-477395, 75-82139 and 75-728437.  The filing date of the referenced applications precede the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced applications mature into a registration(s), the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.  This application may be suspended pending the disposition of the above earlier-filed applications. The examining attorney encloses information regarding pending Application Serial Nos.  76-477395, 75-82139 and 75-728437. 

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at that time in no way limits the applicant's right to address this issue at a later point.

 

Other Considerations

 

Even though the examining attorney has cited the above earlier filed applications, the following issues must be addressed if the applicant wishes to proceed with this application.

 

Color in Drawing

 

Applicant must submit the following:  (1) a statement that “the colors blue and orange are claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color orange appears in the obscured quadrilateral containing “PRO” and the color blue appears in the quadrilateral containing the word “PRESENTER.”  37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

The Identification of Goods is too Broad

 

The wording used as the identification of goods is too broad because it could include different types of goods that are classified in different International Classes.  The applicant may amend the identification to substitute the following wording, if accurate:

 

Computer software (if the software is the downloadable variety, the applicant should state so) used for presenting text, graphics, video, and sound in live or recorded video presentations in Class 9.

-and/or-

Providing temporary use of on-line nonhttp://atlas/netacgi/ - h6http://atlas/netacgi/ - h8-downloadable computer software used for presenting text, graphics, video, and sound in live or recorded video presentations in Class 42.  TMEP section 804.

 

Since the goods may be classified in several international classes, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee of $335 for each additional class and list the classes in ascending International Class order.  37 C.F.R. Section 2.86(b); TMEP sections 810.01 and 1113.01.  The applicant must respond to this issue in order for the application to proceed.

 

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 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification.

 

 

 

 

 

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

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(703) 308-9108 Ext. 247

(703) 746-8108 (Fax)

ecom108@uspto.gov

(703) 305-8747 (Status)

 

 

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.