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  78/550522

 

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

 

SEARCH OF MARK

 

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); however, the applicant is advised that the examining attorney may conduct an additional search of the Office records for similar registered or pending marks upon clarification of the applicant’s identification of goods and services.

 

UNACCEPTABLE IDENTIFICATION & CLASSIFICATION OF GOODS & SERVICES

 

The application lists the goods and services, “electrical and scientific apparatus” in International class 9; “telecommunications” in International Class 38; and “entertainment” in International Class 41.  The applicant must clarify the wording used to describe the goods and services to indicate the common commercial or generic name for each product or service.  In the present case, applicant used the headings of the international classes as the identification of the goods and services.  These headings are meant to indicate only the general subject matter and scope of each of the classes of goods and services.  While such broad designations may be sufficient under the trademark laws and practice of many countries, the U.S. Patent and Trademark Office considers them too broad to identify the goods or services in a United States application.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01 and 1402.01(a).

 

To follow are the examining attorney’s suggestion concerning the applicant’s identification of goods and services.  The applicant may amend the application pursuant to the examining attorney’s suggestions, if accurate:

 

“Electrical and scientific apparatus, namely ______________ (specify common commercial name(s) of apparatus, e.g., DVD recording apparatus) in International class 9.

 

AND

 

“Telecommunications services, namely ______________ (specify common commercial name(s) of telecommunications services, e.g., personal communication services, ISDN services)” in International Class 38.

 

AND

 

“Entertainment services, namely __________________ (specify common commercial name(s) of entertainment services, e.g., providing an on-line computer game)” in International Class 41.

 

It is strongly recommended that the applicant review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services which is available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

APPLICANT MAY NOT EXCEED SCOPE OF PRESENT IDENTIFICATION OF GOODS AND SERVICES

 

While an application may be amended to clarify or limit the identification of goods and services, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the present identification.

 

INQUIRY ON SIGNIFICANCE

 

The applicant must indicate the meaning of the wording “TiVi” and state whether such wording  has any significance in the relevant trade or industry or in relation to the goods or has any meaning in a foreign language.  37 C.F.R. Section 2.61(b).

 

 

 

SPECIMENS MUST BE TRANSLATED

 

The applicant must submit an English translation of all the non-English wording on the submitted specimens of use.  37 C.F.R. §2.61(b); TMEP §904.10.  Upon submission of a valid translation, the examining attorney will review the specimens and make a determination as to whether they are acceptable.

 

APPLICANT MAY DESIGNATE A DOMESTIC REPRESENTATIVE

 

The applicant may designate a domestic representative upon whom notices or process may be served.  Trademark Act Section 1(e), 15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §§604, 811 and 1013.  If applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the Director of the USPTO.  Trademark Act Section 1(e), 15 U.S.C. §1051(e).

 

RESPONSE GUIDELINES

 

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

AUTHORITIES GOVERNING TRADEMARK APPLICATIONS

The following authorities govern the processing of trademark applications:

§         The Trademark Act, 15 U.S.C. Section 1051 et seq.;

§         Trademark Rules of Practice, 37 C.F.R. Part 2;

§         Trademark Manual of Examining Procedure (TMEP).

To access these resources, please see http://www.gov.uspto.report/web/office/tac

For general trademark information, the applicant should telephone the Trademark Assistance Center, at 703-308-9000, or e-mail any questions to TrademarkAssistanceCenter@uspto.gov. For assistance in resolving technical glitches or receiving answers to technical questions, the applicant may e-mail  PrinTEAS@uspto.gov. The applicant should include its telephone number in any e-mail, so the applicant can be contacted directly, if necessary.  General information concerning the trademark application process may also be accessed on the Agency's website  at http://www.gov.uspto.report/main/trademarks.htm (through various on-line resources, such as "Basic Facts about Trademarks").  More detailed information may be found in the Trademark Manual of Examining Procedure, available on-line at http://www.gov.uspto.report/web/offices/tac/tmep/.

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

 

/Sonya B. Stephens/

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(571) 272-9352 (phone)

(571) 273-9108 (fax)

fax no. for official responses only

 

 

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.