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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/709792

 

This letter responds to applicant’s communication filed on September 20, 2006.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

The requirement for an acceptable recitation of services is now made FINAL for the reasons set forth below.

 

Recitation of Services- Class 35

 

 

 

The term “distributing,” as it currently reads, in the proposed amendment to the identification cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing.   As the recitation of services currently reads, the educational services are separated from the distributing services by a semi-colon which acts like a period.  Also, the term “distributing” immediately follows “publishing and” (“publishing and distributing”) and thus could include distributorship services (class 35) or a delivery services (class 39).  However, the applicant may state that it is conducting classes, seminars, conferences, etc. and distributing printed course materials in connection therewith (see below for a suggested recitation of services).  While the identification of goods and/or services may be amended to clarify or limit the services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, the wording “and distributing” should be deleted from the identification.  The applicant may adopt the following, if accurate:

 

 

Class 41:  Conducting classes, seminars, conferences, research groups, working groups, and programs in the fields of personal and professional skills, career development, and human capital management and distributing printed course materials in connection therewith; publishing printed materials in connection therewith, namely books, course materials and newsletters; providing online information in the fields of personal and professional skills and career development.  

 

 

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

 

Search of the Office Records

 

The applicant is reminded of pending Application Serial No. 78693026 (attached to the first action).  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier‑filed application registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.  Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.

 

Response

 

 

PLEASE NOTE:  Applicant is encouraged to telephone the trademark examining attorney to resolve the recitation of services issues raised above.  If the examining attorney is unavailable, the applicant is encouraged to leave a detailed voicemail message including its name, phone number, serial number and instructions regarding each issue raised in this action.

 

If applicant does not respond within six months of the mailing date of this final action, then the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  “and distributing”.  The application will proceed forward for the remaining services and the application will be suspended pending disposition of the cited application.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Laurie Mayes/

Trademark Examining Attorney

Law Office 101

571-272-5874

FAX 571-273-9101

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.