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  78/744394

 

 

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

 

 

Identification of Goods

 

The applicant has identified a large number of products in Class 9, with most of the wording being acceptable as written.  However, the following specific items must be amended:

 

(1) On the third line, the item listed as “integrated circuits modules” must simply be corrected to “integrated circuit modules” (to correct the minor typographical error in the second term).

 

(2) The description of the computer software (i.e., “computer software for use in database management, for business development, for customer service in a wide variety of fields”) is acceptable as to the software for use in database management, but indefinite with regard to the other two types of listed software.  This Office requires that software be identified as specifically as possible with regard to the particular functions that the software performs.  In this case, software for business development could include anything from software that manages a database of business contact information to accounting or financial planning software.  Similarly, the software for customer service is extremely vague, as it is not clear whether this software is for use by customers or business personnel who are assisting customers, nor has the applicant identified what specific functions the software performs for the users.  Accordingly, the applicant must amend this portion of the identification to clearly identify the specific functions/purposes of the software.

 

(3) Finally, the item listed as “fluorescent screens” must be amended to clarify the type(s) of screens.  Amending to “fluorescent video screens” or “fluorescent projection screens” (or a combination of the two – i.e., “fluorescent video and projection screens”) would be acceptable.

 

Please note, in making the above amendments, that while an application may be amended to clarify or limit the identification, 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 that are not within the scope of goods set forth in the present identification.

 

 

Declaration Not Signed or Dated

 

The declaration included with the application form was not signed or dated.  Accordingly, the applicant must submit a statement attesting to the facts set forth in the application, and confirming that the mark is in use in commerce and was in use in commerce on or in connection with the goods listed in the application as of the application filing date.  15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.  This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.32(b) and 2.33. 

 

To satisfy this requirement, applicant may include the following declaration paragraph at the end of its response, properly signed and dated:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

                    (Signature)

 

_____________________________

 (Print or Type Name and Position)

 

_____________________________

                        (Date)

 

 

 

Meaning Inquiry

 

In order to permit proper consideration of all aspects of this application, the applicant must indicate for the record whether BOE (either as a word or as an acronym) has any recognized meaning in the applicant’s industry or in connection with the identified goods, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

 

 

 

No Conflicting Marks Noted

 

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.

 

 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

           /Elizabeth A. Hughitt/

Elizabeth A. Hughitt

Examining Attorney

Law Office 111

U.S. Trademark Office

(571) 272-9384

 

 

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.