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  78/342942

 

This final Office action is a response to applicant’s communication filed October 13, 2004.

STATUS

In a first Office action dated July 16, 2004, the examining attorney refused registration of the applicant’s mark until such time as applicant amended the identification of goods and services.  In its response, applicant amended the identification of goods and services.

REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION IS MADE FINAL 

However, the examining attorney remains of the opinion that the identification is unacceptable.  Therefore, for the reasons stated below, the requirements under TMEP §1402.01 are maintained and made FINAL. 

The identification of services is unacceptable as indefinite.  The meaning of “providing on-line peripherals” is not clear and in any case appears to be beyond the scope of the original identification, which mentions only “providing on-line electronic publications not downloadable.”  The applicant may amend to the following, if accurate.  TMEP §1402.01.

“Books, magazines, and periodicals, all featuring computers and computer peripherals; photographs; pictures; user manuals, instructional manuals, instructional guides, and data manuals all featuring computers and computer peripherals; notebooks; envelopes; writing paper; posters; catalogues, brochures, and price lists, all featuring computers and computer peripherals; file folders; printed timetables; greeting cards; paper boxes; paper containers; paper cartons for delivering goods; paper bags for packaging; plastic bags for packaging; paper banners; paper tags, in International Class 16.”  

“Installation of computer systems and computer networks; maintenance of computer systems, computer peripherals, computer hardware and computer networks and associated peripheral devices, in International Class 37.”  

“Telecommunication services, namely, providing information via the Internet about telecommunication services; providing multiple-user access to databases on a global computer network, in International Class 38.”

“Providing on-line books and magazines in the field of computers and computer peripherals; training in the use and operation of computers, computer graphics cards, optical drives and wireless devices; education services, namely, conducting seminars, conferences and workshops in the field of computers, telecommunications and global networks, in International Class 41.”  

“Computer services, namely, designing computers and computer peripherals for others related to operational and supporting services; computer systems analysis and computer network systems analysis; computer consultation; computer information technology consultation, in International Class 42.” 

The applicant may want to consult The Acceptable Identification of Goods and Services Manual, published by the U.S. Patent and Trademark Office which is available on-line at www.gov.uspto.report/web/offices/tac/doc/gsmanual/.   As set forth in the TMEP, this manual "contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney."  TMEP sec. 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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification. 

For these reasons the refusal is maintained and made FINAL.             

APPLICANT’S OPTIONS 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).   

 

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.

 

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

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.