UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION NO. 1

(Regarding Statement of Use)

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number 78/367415

 

The assigned examining attorney has reviewed the statement of use filed on August 25, 2005 and has determined the following.

 

Clarification Required as to Nature of Goods or Services

 

The Notice of Allowance issued for this application describes applicant’s goods as follows (not including the services that were expressed deleted by applicant):

 

Computer software for use in financial investment and securities portfolio administration and accounting, in International Class 9.

 

Thus, applicant’s software has been described as a product “goods,” not services.  However, the specimen of use provided with the statement of use does not clearly show that the applicant’s mark is used with goods, i.e. software provided by means of electronic media (i.e. recorded on disk or downloaded from applicant to a purchaser’s server).  The screen shot provided by the applicant indicates that the applicant may be providing an electronic service comprised of providing temporary use of on-line non-downloadable software having the function described in the notice of allowance.  Specifically, there is no indication on the specimen of use that the software is downloadable; and it is unclear whether the “local intranet” symbol at the bottom right corner of the screen refers to a customer’s internal network (which would indicate that the software has been loaded onto the user’s own internal server) or whether the symbol refers to applicant’s test network used by applicant to test its software service.  

 

Requirements:

 

(1)  Applicant must provide additional materials that clarify whether applicant’s software is actually a product or service.   37 C.F.R. § 2.61. 

 

(2)  Alternatively, applicant may submit a substitute specimen of use that shows clearly that the mark is being used in connection with the goods (or services).  Should the applicant submit a substitute specimen of use, it must also submit a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(2); TMEP §§904.09 and 1109.09(b).

 

For applicant’s convenience, the following form is provided: 

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

(3)  If applicant is actually providing a service and not a software product or “goods,” applicant must amend the identification and classification to read as follows:

 

Providing temporary use of on-line non-downloadable computer software for use in financial investment and securities portfolio administration and accounting (International Class 42). 

 

37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(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. §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.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Attorney-Advisor

USPTO, Law Office 113

(571) 272-9240

FAX Questions (571) 273-9240

FAX Responses (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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