Priority Action

PODIUM

OOCL LOGISTICS LIMITED

TRADEMARK APPLICATION NO. 78775181 - PODIUM - 022810.00032

To:	OOCL (LOGISTICS) HOLDINGS LIMITED (marames.william@arentfox.com)
Subject:	TRADEMARK APPLICATION NO. 78775181 - PODIUM - 022810.00032
Sent:	7/12/2006 8:39:53 AM
Sent As:	ECOM113@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 78/775181

APPLICANT: OOCL (LOGISTICS) HOLDINGS LIMITED

*78775181*

CORRESPONDENT ADDRESS:

WILLIAM E. MARAMES

ARENT FOX PLLC

1050 CONNECTICUT AVENUE, NW

WASHINGTON, DC 20036-5399

RETURN ADDRESS:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

MARK: PODIUM

CORRESPONDENT’S REFERENCE/DOCKET NO: 022810.00032

CORRESPONDENT EMAIL ADDRESS:

marames.william@arentfox.com

Please provide in all correspondence:

1. Filing date, serial number, mark and

applicant's name.

2. Date of this Office Action.

3. Examining Attorney's name and

Law Office number.

4. Your telephone number and e-mail address.

PRIORITY ACTION

RESPONSE TIME LIMIT: To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date. If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. TMEP §708.01.

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.

OFFICE RECORDS SEARCH: 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.

QUESTIONS: Please contact the assigned trademark examining attorney with any questions.

Serial Number 78/775181

The following were discussed in communication with William E. Marames, Esq., on June 27, 2006. Applicant must respond to each requirement raised below.

RECITATION OF SERVICES

The identification of services for International Class 39 and International Class 42 are unacceptable as indefinite. Furthermore, the services identified may fall into more than one International Class. TMEP §§1402.01 and 1402.03.

Regarding International Class 39:

The current wording for the identification of services for International Class 39 is “transportation of cargo, freight and containers; shipping of goods; cargo consolidation services; unloading cargo, freight and containers; delivery of goods; freight forwarding services; road haulage services; storage of cargo, freight and containers; rental of storage space; custom clearance; warehousing; rental of warehouses; container terminal services; provision of container terminal facilities and amenities; cargo, freight and container transportation and storage services, providing information in the field of cargo, freight and container transportation and storage by means of a global computer network; the provision and facilitation of such services by means of an e-commerce solution, electronic data interchange or other means; the provision of electronic ordering and payment information services; the provision of computer links to third party web sites; the provision of independent error checking and system log functionality to users of e-commerce based and electronic data interchange-based transportation and storage services; the provision of electronic delivery and receipt of shipping instructions; the provision of software applications in relation to the provision and facilitation of cargo, freight and container transportation and storage services; the provision of electronic cargo tracking services; the provision of such services via short messaging service; all of the above services relating to cargo, freight and container transportation and storage services; tracking and monitoring of cargo, freight and containers; advisory and consultancy services related to all the aforesaid services.”

Generally, identifications of transportation services must indicate the specific means of transportation (e.g., air, truck, train, boat) and the common commercial or generic name for the goods transported. TMEP §1402.01.

The wording “transportation of cargo, freight and containers” is indefinite. Applicant must indicate the specific means of transportation (e.g., air, truck, train). Applicant may adopt the following suggestions, if accurate: “freight, cargo, and container transportation by [indicate means of transportation, e.g., air, boat, rail, truck, bus]” in International Class 39.

The wording “shipping of goods” is indefinite. Applicant must specify the means of transporting the goods (e.g., air, train, truck, ship) and the common commercial or generic name for the goods. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §1402.01. Applicant may adopt the following suggestion, if accurate: “transportation of [specify commercial or generic name of goods, e.g., household goods, goods of others] by [specify means of transportation, e.g., air, boat, rail, bus]” in International Class 39.

The wording “cargo consolidation” is indefinite and unclear. “Consolidation” is not the name typically used to describe the service of uniting cargo. Applicant must specify the nature of the services as well as their main purpose and their particular field of use or channels of trade. Applicant may adopt the following suggestion, if accurate: “cargo handling” in International Class 39. TMEP §1402.01.

“Delivery of goods” is indefinite. Applicant must indicate the means of delivery (e.g., air, truck, train, ship). Applicant may adopt either or both of the following suggestions, if accurate: “delivery of goods by [specify means of transportation, e.g., air, boat, rail, bus]” and/or “express delivery of goods by [specify means of transportation, e.g., air, boat, rail, bus]” in International Class 39. TMEP §1402.01.

The wording “road haulage services” is indefinite. Applicant must specify the nature of the services. Applicant may adopt any of the following suggestions, if accurate: “industrial vehicle rental for road haulage of goods with drivers” or “transportation of goods of others by truck” in International Class 39. TMEP §1402.01.

The wording “rental of storage space” is unacceptable as indefinite. Applicant must specify the particular field of use or channels of trade in which the services are offered. Applicant may adopt the following identification of services, if accurate: “rental of warehouse space” in International Class 39. TMEP §1402.01.

“Custom clearance” is unacceptable as indefinite and is classified incorrectly. Applicant must amend the wording to “customs clearance services” in International Class 35. TMEP §1402.01.

“Rental of warehouses” is unacceptable as indefinite. Applicant must specify the particular field of use in which the services are offered. Applicant may adopt the following suggestion, if accurate: “rental of warehouse space” in International Class 39. TMEP §1402.01.

“Container terminal services” and “provision of container terminal facilities and amenities” is unacceptable as indefinite. Applicant must specify the particular field of use in which the services are offered. Applicant may adopt the following suggestion, if accurate: “providing facilities for cargo handling, namely, shipment of container goods by truck” or “providing facilities for cargo handling, namely, shipment of container goods by air, truck, boat [if facility is not “shipment of container goods,” indicate service provided, e.g. storage of goods for others] and [list amenities provided by common commercial name, e.g., warehousing services] in International Class 39. TMEP §1402.01.

The wording “cargo, freight and container transportation and storage services” is indefinite. Applicant must specify the nature of the services provided and the type of goods transported and stored. Applicant may adopt the following suggestion, if accurate: “warehousing services, namely, http://tess2.gov.uspto.report/netacgi/ - h90 http://tess2.gov.uspto.report/netacgi/ - h92storage, distribution, pick-up of [specify type of freight, cargo, and containers, e.g. household goods, plastic containers for storage, metal containers] for others” in International Class 39. TMEP §1402.01.

The wording “providing information in the field of cargo, freight and container transportation and storage by means of a global computer network; the provision and facilitation of such services by means of an e-commerce solution, electronic data interchange or other means” is unacceptable as unclear. Applicant may amend the wording to “providing information in the field of cargo, freight and container transportation and storage by electronic means” in International Class 39. TMEP §1402.01.

The wording “the provision of electronic ordering and payment information services” is indefinite and classified incorrectly. Applicant must specify the nature of the services as well as their main purpose and their particular field of use or channels of trade. Applicant may adopt any of the following suggestions, if accurate:

“on-line http://tess2.gov.uspto.report/netacgi/ - h4 http://tess2.gov.uspto.report/netacgi/ - h6ordering services featuring [indicate field or type of goods, e.g. air freight, plastic containers for shipping goods of others]” in International Class 35; and/or

The wording “the provision of computer links to third party web site” is unacceptable as indefinite and identifies services that may be classified in more than one international class. Applicant must specify the subject matter and purpose of the links provided. Applicant may adopt one of more of the following suggestion, if accurate:

“providing http://tess2.gov.uspto.report/netacgi/ - h15 http://tess2.gov.uspto.report/netacgi/ - h17links to web sites of others featuring transportation of goods of others by [indicate means of transportation, truck, boat, train]” in International Class 39. TMEP §1402.01.

The wording “the provision of independent error checking and system log functionality to users of e-commerce based and electronic data interchange-based transportation and storage services” is unacceptable as indefinite and is classified incorrectly. Applicant must specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Applicant may adopt the following identification of services, if accurate: “computer services, namely monitoring and reporting on the performance, availability, and http://tess2.gov.uspto.report/netacgi/ - h1 http://tess2.gov.uspto.report/netacgi/ - h3errors of websites of others” in International Class 42. TMEP §1402.01.

The wording “the provision of electronic delivery and receipt of shipping instructions” is classified incorrectly. Applicant must amend the application to classify the services in International Class 38. TMEP §1402.01.

The current wording “the provision of software applications in relation to the provision and facilitation of cargo, freight and container transportation and storage services” is unacceptable as indefinite and is classified incorrectly. Applicant must specify the nature of the services as well as their main purpose. Applicant may adopt the following identification of services, if accurate: “providing temporary use of non-downloadable computer software for preparing http://tess2.gov.uspto.report/netacgi/ - h12 http://tess2.gov.uspto.report/netacgi/ - h14shipping documents over computer networks, intranets and the internet” in International Class 42. TMEP §1402.01.

The wording “the provision of electronic cargo tracking services; the provision of such services via short messaging service” and “tracking and monitoring of cargo, freight, and containers” is unacceptable as indefinite and is classified incorrectly. Applicant must specify the nature of the services as well as their main purpose and their particular field of use or channels of trade. Applicant may adopt the following suggestion, if accurate: “computerized http://tess2.gov.uspto.report/netacgi/ - h3 http://tess2.gov.uspto.report/netacgi/ - h5tracking and tracing of cargo, freight, and containers while in transit; monitoring and http://tess2.gov.uspto.report/netacgi/ - h6 http://tess2.gov.uspto.report/netacgi/ - h8tracking of cargo, freight, and container shipments” in International Class 35. TMEP §1402.01.

The wording “advisory and consultancy services related to all the aforesaid services” is unacceptable as indefinite. Applicant must indicate the subject matter of the services by common name. Applicant may adopt the following suggestion, if applicable: “advisory and consultancy services relating to storage, transportation and delivery of freight, cargo, and containers” in International Class 39. TMEP §1402.01.

The examining attorney notes that the current wording “unloading cargo, freight and containers; freight forwarding services; storage of cargo, freight and containers” is acceptable as written.

Applicant may adopt the following suggestion for International Class 39 in its entirety, if accurate:

“customs clearance services; on-line http://tess2.gov.uspto.report/netacgi/ - h4 http://tess2.gov.uspto.report/netacgi/ - h6ordering services featuring [indicate field or type of goods, e.g. air freight, plastic containers for shipping goods of others]; “computerized http://tess2.gov.uspto.report/netacgi/ - h3 http://tess2.gov.uspto.report/netacgi/ - h5tracking and tracing of cargo, freight, and containers transported by [indicate means of transportation, e.g., truck, air, boat, rail] while in transit; monitoring and http://tess2.gov.uspto.report/netacgi/ - h6 http://tess2.gov.uspto.report/netacgi/ - h8tracking of cargo, freight, and container shipments” in International Class 35; and/or

“the provision of electronic delivery and receipt of shipping instructions” in International Class 38; and/or

“freight, cargo, and container transportation by [indicate means of transportation, e.g., air, boat, rail, truck, bus]; unloading cargo, freight and containers; delivery of goods by [specify means of transportation, e.g., air, boat, rail, bus];; freight forwarding services; transportation of goods of others by truck; storage of cargo, freight and containers; warehousing services; rental of warehouse space; providing facilities for cargo handling, namely, shipment of container goods by [indicate means of transportation, e.g., air, boat, rail, truck, bus]; providing facilities for cargo handling, namely, [indicate service provided, e.g., shipment of container goods by air, storage of goods for others] and [list amenities provided by common commercial name, e.g., warehousing services]; providing information in the field of cargo, freight and container transportation and storage by electronic means; providing http://tess2.gov.uspto.report/netacgi/ - h15 http://tess2.gov.uspto.report/netacgi/ - h17links to web sites of others featuring transportation of goods of others by [indicate means of transportation, truck, boat, train]; advisory and consultancy services in the field of storage, transportation and delivery of freight, cargo, and containers” in International Class 39; and/or

“computer services, namely monitoring and reporting on the performance, availability, and http://tess2.gov.uspto.report/netacgi/ - h1 http://tess2.gov.uspto.report/netacgi/ - h3errors of websites of others; providing temporary use of non-downloadable computer software for preparing http://tess2.gov.uspto.report/netacgi/ - h12 http://tess2.gov.uspto.report/netacgi/ - h14shipping documents over computer networks, intranets and the internet” in International Class 42. TMEP §1402.01.

Regarding International Class 42:

The current wording for the identification of services for International Class 42 is “provision of software applications in relation to the provision and facilitation of cargo, freight, and container transportation and storage services; hosting computer sites (web sites); conversion of data or documents from physical to electronic media; computer software design; provision of CDs and computer software containing business and finance information and facilitating the exchange of information in the field of cargo, freight and container transportation and storage services; data conversion of computer programs and data (not physical conversion); provision of linking services for interchanging data among computer users.” TMEP §1402.01.

The wording “provision of software applications in relation to the provision and facilitation of cargo, freight, and container transportation and storage services” is unacceptable as indefinite and may be classified in more than one international class. Applicant must indicate the type of software applications provided. If applicant is providing physical software (e.g., computer programs) for use in a particular field, or downloadable software, then applicant must specify the field of use and classify the goods in International Class 9. Alternatively, if applicant is providing non-downloadable software for others to access and use temporarily, the correct classification is International Class 42. Applicant may adopt one or more of the following suggestions, if accurate:

“computer software and downloadable computer software for use in the field of cargo handling, freight and container transportation by [indicate means of transport, e.g., air, bus, rail, boat] to track freight, process shipments, and prepare shipping invoices” in International Class 9; and/or

“providing http://tess2.gov.uspto.report/netacgi/ - h17 http://tess2.gov.uspto.report/netacgi/ - h19temporary use of non-downloadable http://tess2.gov.uspto.report/netacgi/ - h18 http://tess2.gov.uspto.report/netacgi/ - h20computer software for tracking freight, processing shipments, preparing shipping invoices over http://tess2.gov.uspto.report/netacgi/ - h19 http://tess2.gov.uspto.report/netacgi/ - h21computer networks, intranets and the internet” in International Class 42.

The wording “hosting computer sites (web sites)” is unacceptable as indefinite and because applicant uses parentheses in the identification of services. Applicant must indicate whether the websites are hosted for others of for applicant’s own digital content. Additionally, parenthetical information is only permitted to indicate translation of the matter immediately before it. TMEP §1402.12. Applicant may amend the wording to “hosting of internet sites for third parties” in International Class 42, if accurate. TMEP §1402.01.

“Provision of CDs and computer software containing business and finance information and facilitating the exchange of information in the field of cargo, freight and container transportation and storage services” is unacceptable as indefinite and is classified incorrectly. Typically, compact discs (CDs) and computer software are goods classified in International Class 9. Applicant must amend the wording to indicate the subject matter of the compact discs and the purpose, function, and field of use of the computer software. TMEP §1402.03(d). Applicant may adopt the following suggestion, if accurate: “compact discs featuring business and financial information for the purpose of facilitating exchange of business and financial information in the field of cargo handling, [indicate type of freight and container services, e.g., air freight services, rail freight services, truck freight services] and storage therefore; computer software for use in business and financial management in the field of [indicate type of freight and container services, e.g., air, rail, truck] cargo, freight, and container transportation” in International Class 9.

Applicant must delete the parentheses and information inside them from the wording “data conversion of computer programs and data (not physical conversion).” Parenthetical information is only permitted to indicate translation of the matter immediately before it. TMEP §1402.12.

The wording “provision of linking services for interchanging data among computer users” is unacceptable as indefinite and identifies services that may fall into more than one international class. Applicant must specify the subject matter and purpose or use of the links provided. Applicant may adopt any or all of the following suggestions, if accurate:

“providing on-line communications http://tess2.gov.uspto.report/netacgi/ - h13 http://tess2.gov.uspto.report/netacgi/ - h15links which transfer the website user to other local and global web pages” in International Class 35; and/or

The examining attorney notes that the wording “conversion of data or documents from physical to electronic media,” “computer software design,” and “data conversion of computer programs and data” is acceptable as written in the current identification for International Class 42.

Applicant may adopt the following suggestion for International Class 42 in its entirety, if accurate:

“compact discs featuring business and financial information for the purpose of facilitating exchange of business and financial information in the field of cargo handling, [indicate type of freight and container services, e.g., air freight services, rail freight services, truck freight services] and storage therefore; computer software for use in the field of cargo handling, freight and container transportation by [indicate means of transport, e.g., air, bus, rail, boat] to track freight, process shipments, and prepare shipping invoices” in International Class 9; and/or

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.

MULTIPLE CLASS APPLICATIONS

Applicant classified and submitted fees for two classes of services, but the application identifies services that are classified in at least 6 international classes. If applicant prosecutes this application as a combined, or six-class application, then applicant must comply with each of the following for those services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1) Applicant must list the services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and

(2) Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

APPLICANT MAY PROCEED SOLELY ON INTENT-TO-USE BASIS

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration. Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01 and 1004.01(b).

If applicant has questions about its application or needs assistance in responding to this Priority Action, please telephone the assigned trademark examining attorney directly at the number below.

/Megan K. Whitney/

Trademark Examining Attorney

Law Office 113

Phone: (571) 272-8954

Fax: (571) 273-8954

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