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  78/751410

 

Search of Records

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods or Services Indefinite

 

The wording “web-based computer software,” in the identification of goods needs clarification because it is indefinite.  Applicant must amend the identification of goods or services to specify the common commercial or generic name for the goods or services.  If there is no common commercial or generic name for the goods or services, then applicant must describe the goods and services and intended consumer as well as their main purpose and intended uses.  TMEP §1402.01.

 

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

 

International Class 9: 

Downloadable computer software for the analysis of sewer system flow data

 

Or applicant may adopt the following identification of services, if accurate:

 

International Classification 42:   

Providing temporary use of online, non-downloadable computer software for the analysis of sewer system flow data

 

 

Scope Advisory

 

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

 

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.

 

Response Guidelines

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

“TMEP” refers to the Trademark Manual of Examining Procedure (4th ed., 2005), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm.  This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.

 

Applicant may hire a specialist attorney to assist in prosecuting this application.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  However, applicant may consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

 

 

/Edward Fennessy/

Examining Attorney

Law Office 114

Tel. No. (571) 272-8804

 

 

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.