| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78569037 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
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 1105.01.
Identification of Goods:
The Examining Attorney has raised several concerns with regard to the identification of goods:
The Examining Attorney indicated that Applicant must specify the wording “video displays” and suggested “video monitors and liquid crystal displays.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “video displays” to “video monitors, video screens, and flat panel display screens.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must specify the term “monitors” in the identification of goods. Applicant has amended “monitors” to “computer monitors,” as suggested by the Examining Attorney.
The Examining Attorney indicated that Applicant must specify the term “servers” in the identification of goods and suggested the wording “computer hardware, namely communication servers.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “servers” to “computer hardware, namely communications servers, file servers, web servers, and network access server hardware.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that the wording “computer storage devices” in the identification of goods should be specified and suggested the wording “computer storage devices, namely computer memory hardware.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “computer storage devices” to “computer data storage devices, namely tape libraries, disk arrays and storage arrays.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that the wording “interface boards” in the identification of goods should be specified. Applicant has amended “interface boards” to “computer interface boards,” as suggested by the Examining Attorney.
The Examining Attorney indicated that the wording “mouse pointing devices” in the identification of goods should be specified. Applicant has amended “mouse pointing devices” to “computer mouse pointing devices,” as suggested by the Examining Attorney.
The Examining Attorney indicated that the term “peripherals” in the identification of goods should be specified and suggested amending the term to “computer peripherals.” Applicant thanks the Examining Attorney for her suggestion, but has deleted “peripherals,” as the wording “computer peripherals” is already included in the application’s identification of goods.
The Examining Attorney indicated that the wording “processors and memories” in the identification of goods should be specified. Applicant has amended the wording “processors and memories” to “computer processing units and computer memories,” as suggested by the Examining Attorney.
The Examining Attorney indicated that the wording “smart cards” in the identification of goods should be specified and suggested the wording “blank smart cards.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “smart cards” to “blank smart cards, encoded smart cards containing programming used to access computer networks, and programmable smart cards.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must specify the major components of the “voice messaging systems” and suggested the wording “voice messaging systems comprised of telephones and video monitors.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “voice messaging systems” to “voice messaging systems comprised of computer hardware and software for use in operating voice mail and voice messaging.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must indicate the specific function of “computer programs for use with computer servers.” Applicant respectfully submits that this language has previously been acceptable to the Trademark Office and should be acceptable in this application. Applicant owns the following registration in this class with a description of goods that includes this language: SUN RAY (2,530,320). In addition, Applicant owns the following registrations and allowed applications in this class with descriptions of goods that include the virtually identical language “computer server software” or “server software”: JAVASERVER (2,453,383), NETBLADE (78/256,438), SUN FIRE (2,851,226), and SUNTONE CERTIFIED (75/888,972).
The Examining Attorney indicated that Applicant must indicate the specific function of “computer programs for use in telephones.” Applicant has amended “computer programs for use in telephones” to “computer telephony software for enabling telephone activities to be performed by a computer.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must indicate the specific function of “computer programs downloadable from global computer networks.” Applicant has amended “computer programs downloadable from global computer networks” to “computer programs for the storage of data and information downloadable from global computer networks.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
Finally, the Examining Attorney indicated that Applicant must specify the subject matter or field of “downloadable electronic publications.” Applicant has amended “downloadable electronic publications” to “downloadable electronic publications in the fields of computing, computer networking, information technology and digital video and audio technology.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer hardware; computer peripherals; computers; computer operating systems; hand-held computers; mainframe-class computers; computer workstations; video displays; keyboards; monitors; servers; disc drives; computer storage devices; integrated circuits; interface boards; modems; mouse pointing devices; mouse pads; peripherals; printers and printer peripherals; printed circuit boards containing electrical components and sockets; processors and memories; blank magnetic data carriers; audio cassette recorders; audio cassette players; compact disc players; compact disc recorders; blank computer recording discs; cash registers; calculators; computer chips; computer disk drives; computer discs; data processors; digital cameras; digital video recorders; electronic encryption units; facsimile machines; global positioning system transmitters and receivers; internet television hardware; microprocessors; microcomputers; minicomputers; motion picture cameras; optical scanners; oscilloscopes; pedometers; photocopying machines; personal digital assistants; photographic cameras; photographic projectors; slide projectors; radio pagers; radios, automatic vending machines; scanners; smart cards; smart card readers; telephones; telephone answering machines; television sets; television set top boxes; thermostats; video cameras; video cassette recorders; video monitors; video tape recorders; voice messaging systems; voting machines; web telephones; wireless data communications hardware; computer programs for testing compatibility of computer programs; computer programs for use in computer networking; computer programs for use in computer emulation; computer programs for use in electronic mail; computer programs for creating graphical interfaces; computer programs for use in database management; computer programs for document processing; computer programs for word processing; computer programs for preparing spreadsheets; computer programs for use in computer security; computer programs for use in the development of computer programs, programming languages, tool kits and compilers; computer programs for use in developing, compiling and executing other computer programs on computers, computer networks, and global communications networks; computer programs for use in navigating, browsing, transferring information, and distributing and viewing other computer programs on computers, computer networks and global communications networks; computer programs for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging, and/or enhancing sound, video, images, graphics, and/or data; computer operating system programs; computer utility programs; computer programs for use with computer servers; computer programs for use in telephones; computer programs used in accessing databases; computer game programs; computer programs downloadable from global computer networks; and instructional manuals sold therewith; downloadable electronic publications | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer hardware; computer peripherals; computers; computer operating systems; hand-held computers; mainframe-class computers; computer workstations; video monitors, video screens, and flat panel display screens; keyboards; computer monitors; computer hardware, namely communications servers, file servers, web servers, and network access server hardware; disc drives; computer data storage devices, namely tape libraries, disk arrays, and storage arrays; integrated circuits; computer interface boards; modems; computer mouse pointing devices; mouse pads; printers and printer peripherals; printed circuit boards containing electrical components and sockets; computer processing units and computer memories; blank magnetic data carriers; audio cassette recorders; audio cassette players; compact disc players; compact disc recorders; blank computer recording discs; cash registers; calculators; computer chips; computer disk drives; computer discs; data processors; digital cameras; digital video recorders; electronic encryption units; facsimile machines; global positioning system transmitters and receivers; internet television hardware; microprocessors; microcomputers; minicomputers; motion picture cameras; optical scanners; oscilloscopes; pedometers; photocopying machines; personal digital assistants; photographic cameras; photographic projectors; slide projectors; radio pagers; radios, automatic vending machines; scanners; blank smart cards, encoded smart cards containing programming used to access computer networks, and programmable smart cards; smart card readers; telephones; telephone answering machines; television sets; television set top boxes; thermostats; video cameras; video cassette recorders; video monitors; video tape recorders; voice messaging systems comprised of computer hardware and software for use in operating voice mail and voice messaging; voting machines; web telephones; wireless data communications hardware; computer programs for testing compatibility of computer programs; computer programs for use in computer networking; computer programs for use in computer emulation; computer programs for use in electronic mail; computer programs for creating graphical interfaces; computer programs for use in database management; computer programs for document processing; computer programs for word processing; computer programs for preparing spreadsheets; computer programs for use in computer security; computer programs for use in the development of computer programs, programming languages, tool kits and compilers. computer programs for use in developing, compiling and executing other computer programs on computers, computer networks, and global communications networks; computer programs for use in navigating, browsing, transferring information, and distributing and viewing other computer programs on computers, computer networks and global communications networks; computer programs for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging, and/or enhancing sound, video, images, graphics, and/or data; computer operating system programs; computer utility programs; computer programs for use with computer servers; computer telephony software for enabling telephone activities to be performed by a computer; computer programs used in accessing databases; computer game programs; computer programs for the storage of data and information downloadable from global computer networks; and instructional manuals sold therewith; downloadable electronic publications in the nature of manuals, magazines and books in the fields of computing, computer networking, information technology and digital video and audio technology. | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /sabel/ |
| SIGNATORY NAME | Sally M. Abel, Esq. |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 03/15/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 15 16:52:20 EST 2006 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20060315165220151046-7856 9037-3202c25cdf5d7746f328 df2d8cdd245aee0-N/A-N/A-2 0060315123752816034 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
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 1105.01.
Identification of Goods:
The Examining Attorney has raised several concerns with regard to the identification of goods:
The Examining Attorney indicated that Applicant must specify the wording “video displays” and suggested “video monitors and liquid crystal displays.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “video displays” to “video monitors, video screens, and flat panel display screens.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must specify the term “monitors” in the identification of goods. Applicant has amended “monitors” to “computer monitors,” as suggested by the Examining Attorney.
The Examining Attorney indicated that Applicant must specify the term “servers” in the identification of goods and suggested the wording “computer hardware, namely communication servers.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “servers” to “computer hardware, namely communications servers, file servers, web servers, and network access server hardware.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that the wording “computer storage devices” in the identification of goods should be specified and suggested the wording “computer storage devices, namely computer memory hardware.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “computer storage devices” to “computer data storage devices, namely tape libraries, disk arrays and storage arrays.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that the wording “interface boards” in the identification of goods should be specified. Applicant has amended “interface boards” to “computer interface boards,” as suggested by the Examining Attorney.
The Examining Attorney indicated that the wording “mouse pointing devices” in the identification of goods should be specified. Applicant has amended “mouse pointing devices” to “computer mouse pointing devices,” as suggested by the Examining Attorney.
The Examining Attorney indicated that the term “peripherals” in the identification of goods should be specified and suggested amending the term to “computer peripherals.” Applicant thanks the Examining Attorney for her suggestion, but has deleted “peripherals,” as the wording “computer peripherals” is already included in the application’s identification of goods.
The Examining Attorney indicated that the wording “processors and memories” in the identification of goods should be specified. Applicant has amended the wording “processors and memories” to “computer processing units and computer memories,” as suggested by the Examining Attorney.
The Examining Attorney indicated that the wording “smart cards” in the identification of goods should be specified and suggested the wording “blank smart cards.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “smart cards” to “blank smart cards, encoded smart cards containing programming used to access computer networks, and programmable smart cards.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must specify the major components of the “voice messaging systems” and suggested the wording “voice messaging systems comprised of telephones and video monitors.” Applicant thanks the Examining Attorney for her suggestion. Applicant has amended “voice messaging systems” to “voice messaging systems comprised of computer hardware and software for use in operating voice mail and voice messaging.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must indicate the specific function of “computer programs for use with computer servers.” Applicant respectfully submits that this language has previously been acceptable to the Trademark Office and should be acceptable in this application. Applicant owns the following registration in this class with a description of goods that includes this language: SUN RAY (2,530,320). In addition, Applicant owns the following registrations and allowed applications in this class with descriptions of goods that include the virtually identical language “computer server software” or “server software”: JAVASERVER (2,453,383), NETBLADE (78/256,438), SUN FIRE (2,851,226), and SUNTONE CERTIFIED (75/888,972).
The Examining Attorney indicated that Applicant must indicate the specific function of “computer programs for use in telephones.” Applicant has amended “computer programs for use in telephones” to “computer telephony software for enabling telephone activities to be performed by a computer.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
The Examining Attorney indicated that Applicant must indicate the specific function of “computer programs downloadable from global computer networks.” Applicant has amended “computer programs downloadable from global computer networks” to “computer programs for the storage of data and information downloadable from global computer networks.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.
Finally, the Examining Attorney indicated that Applicant must specify the subject matter or field of “downloadable electronic publications.” Applicant has amended “downloadable electronic publications” to “downloadable electronic publications in the fields of computing, computer networking, information technology and digital video and audio technology.” Applicant believes that the description as amended more accurately describes Applicant’s anticipated goods, while still addressing the Examining Attorney’s concerns.