UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 5/20/2008

 

Action on applicant’s mark had previously been suspended on October 25, 2006, pending the disposition of serial no. 78634638. That mark has abandoned, and therefore is no longer at issue.  However, upon further review of the application, the examining attorney has determined that the following requirement for registration must issue.  Apologies are extended to the applicant for any confusion this may cause.

 

CLAIM OF OWNERSHIP OF REGISTRATION

 

If applicant is the owner of U.S. Registration No. 3267694, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 3267694.

 

 

The following issue is maintained and continued:

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES REQUIRES CLARIFICATION

 

The identification of services requires further amendment.  See TMEP §1402.01. 

 

The wording “information services” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” -- International Class 35; “providing information regarding financing and insuring an automobile” -- International Class 36; and “providing information regarding the repair and maintenance of automobiles”-- International Class 37.  Therefore, to enable proper classification and examination of the application, applicant must specify the subject matter of the “information services.” 

 

Applicant’s entry of “information of interest to newlyweds, namely, home buying and maintenance, budgets, home entertainment, sex, relationships, pregnancy and children,” currently listed in International Class 035 is indefinite, and not sufficiently specific to classify the services.  Therefore, applicant must amend this wording to better specify the subject matter of the information services, and properly classify them.  This entry is not included in the suggested amended identification below.

 

The proposed amendment to the identification in International Class 038 cannot be accepted because the wording “electronic bulletin boards” refers to services that are not within the scope of the identification that was set forth in the application at the time of filing.  Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording must be deleted from the identification.

 

Applicant is encouraged to consult the Identification Manual (see link below) for assistance in identifying and classifying its services.  If applicant finds that its services fall into more than three classes, then applicant must either: (1) follow the instructions below for a multi-class application; or (2) delete all of the services except for three classes.

 

Applicant must still fulfill the multi-class application requirements for the classes added on October 18, 2006.

 

Applicant may adopt the following identification of goods, if accurate:

 

International Class 035: Computerized online retail store services featuring merchandise of interest to newlyweds, in the fields of, home decorating, furniture and appliances.

 

International Class 038: Providing online chat rooms for transmission of messages in the fields of, home decorating, furniture and appliances; information of interest to newlyweds, namely, home buying and maintenance, budgets, home entertainment, sex, relationships, pregnancy and children.

 

International Class 045: Providing marital advice via the Internet to newlyweds.

 

See TMEP §1402.01.

 

Identification Manual Online

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Additions to Identification Not Permitted

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Multiple – Class Application Requirements

 

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

 

(1)        Applicant must list the goods/services by international class;

 

(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 international 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; and 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; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

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) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  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, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Filing Fees

 

The filing fee for adding classes to an application is as follows:

 

         (1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

 

         (2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

 

/Lydia M. Belzer/

Trademark Examining Attorney

Law Office 108

571-272-5594

Lydia.Belzer@uspto.gov (informal responses only)

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 5/20/2008 FOR

APPLICATION SERIAL NO. 78728088

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78728088&doc_type=OOA&mail_date=20080520 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 5/20/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.