UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  78/366289

 

The following issues were discussed in communication with Mr. Gardner on 9/2/04.

 

Prior Registration

 

The applicant submitted an ownership number using a serial number.  The number should be the registration number.  Please resubmit the claim using the registration number.

 

The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2,832,082.

 

 

Specimen

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimens, and clarification is required.  Specifically, the drawing displays the mark as DOMINION, and the specimen depicts the mark as MAXVIEW DOMINION.

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §807.14(a);

 

(2)   submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(3)   amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

Class 9:            software, hardware and systems for managing, monitoring and controlling networks in the field of earth-based satellite communication

 

 

TMEP section 1402.

 

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 and services recited 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.

 

 

 

 

/Ann K. Linnehan/

Trademark Attorney

Law Office 114

703/308-9114 ext. 427

 

 

 

 

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