Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

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  78/390998

 

This letter responds to the applicant’s communication filed on April 18, 2005.

 

The applicant (1) amended the identification of goods in International Class 9; (2) added International Classes 35, 38, and 42 to the application; (3) submitted a signed declaration; and (4) submitted specimens of use.  No. (3) is acceptable.  No. (2) is acceptable, in part.  The recitation of services in International Class 42 is acceptable and has been entered into the record.  No. (4) also is acceptable, in part.  The substitute specimens for Classes 9, 38, and 42 are acceptable.

 

1.         Search Results[1]

 

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.

 

2.            Identification of Goods in International Class 9

 

a.         The wording “CD-ROMs containing musical lessons and instruction” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Multimedia software recorded on CD-ROMs featuring music lessons and instruction,” if accurate.  TMEP §1402.01.

 

b.         The applicant may adopt the following identification of goods in International Class 9, if accurate:  Computer software, namely, computer software for electronic publishing; multimedia software recorded on CD-ROMs featuring music lessons and instruction.

 

c.         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 that are not within the scope of goods set forth in the present identification.

 

3.            Recitation and Classification of Services in International Class 35

 

a.         The wording “to facilitate the promotion and distribution of goods and services” in the recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

b.         The applicant has classified “on-line courses of instruction in the field of music” in International Class 35.  The correct classification is International Class 41.  The applicant must either delete the foregoing services or add International Class 41 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

c.         If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimens of record are acceptable for Classes 9, 38, 41, and 42 only.  See subsection 5 below.

 

d.         If the applicant adds International Class 41 to the application, it may adopt the following recitation of services in that class, if accurate:  Conducting on-line [indicate specific mode of instruction, e.g., classes, workshops, seminars, etc.] in the field of music.

 

e.         The applicant may adopt the following recitation of services in International Class 35, if accurate:  Operating on-line marketplaces for sellers of goods and/or services.

 

f.          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 services that are not within the scope of the services recited in the present identification.

 

4.            Recitation and Classification of Services in International Class 38

 

a.         The applicant has classified “providing a website featuring information in the fields of literature, visual arts, original music, music instruction, artwork, photography and reference materials” in International Class 38.  The correct classification is International Class 41.  The applicant must either delete the foregoing services or add International Class 41 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  See subsection 3.c. above for instructions on adding classes of goods/services to the application.

 

b.         The applicant must clarify the recitation of services by indicating the field or subject matter of its electronic bulletin boards.  TMEP §1402.11.

 

c.         If the applicant adds International Class 41 to the application, it may adopt the following recitation of services in that class, if accurate:  Providing a website featuring information in the fields of literature, visual arts, original music, music instruction, artwork, photography and reference materials.

 

d.         The applicant may adopt the following recitation of services in International Class 38, if accurate:  Providing multiple user access to a global computer information network; providing an online, interactive bulletin board for the electronic transmission of messages among computer users concerning [indicate field or subject matter, e.g., music, music lessons, etc.].

 

e.         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 services that are not within the scope of the services recited in the present identification.

 

5.         Class 35 Specimens

 

The specimens do not show use of the mark for any Class 35 services identified in the application.  As explained in subsection 3 above, the only services properly classified in International Class 35 are the “Providing an on-line marketplace to facilitate the promotion and distribution of goods and services by others via a global computer network” services.  None of the specimens shows that the applicant is providing an on-line marketplace.

 

Accordingly, the applicant must submit a specimen showing use of the mark for the Class 35 services specified.  37 C.F.R. §2.56; TMEP §904.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

Pending an adequate response to the above, registration is refused because the specimens of record for Class 35 do not show use of the proposed mark as a service mark.  Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; TMEP §§904.11 and 1301.02 et seq.

 

A prompt response to this Office action will expedite the handling of this matter.

 

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  “CD-ROMs containing musical lessons and instruction” in International Class 9; International Class 35 in its entirety; and “providing a website featuring information in the fields of literature, visual arts, original music, music instruction, artwork, photography and reference materials; providing an online, interactive bulletin board for the electronic transmission of messages among computer users” in International Class 38.  The application will then proceed forward for the remaining goods and services only.  37 C.F.R. §2.65(a).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

(571) 272-9164

 

 

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 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.