Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   78/775181      

 

NOTICE OF SUSPENSION

 

SUSPENSION PROCEDURE:  This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  37 C.F.R. §2.67.  However, the examining attorney will conduct periodic status checks and may issue inquiries at 6 month intervals from the mailing date of this notice.  TMEP §716.05.  If a status inquiry Office action issues, applicant will have 6 months from the mailing or e-mailing date of the status inquiry to respond.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

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.

 

This letter responds to applicant’s communication filed on January 16, 2007.

 

Action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant's country of origin.  If the registration is in a foreign language, an English translation must also be submitted.  15 U.S.C. §1126(e); 37 C.F.R. §§2.34(a)(3)(ii); TMEP §§716.02(b), 1004 et seq.  Please note that applicant must notify the examining attorney if the foreign application abandons.

 

The requirement for a definite identification of services is continued and maintained for the following reasons.

 

RECITATION OF SERVICES 

Particular wording in the amended identification of services is unacceptable as indefinite and classified incorrectly.  TMEP §§1402.01, 1401.02(a) and 1401.03(b). The identification for International Class (Class) 36 is acceptable as written.  The identification for Classes 35, 38, 39, and 42 are unacceptable as explained by individual class below.

 

International Class 35

The Class 35 services are currently identified as “Customs clearance services; computerized tracking and tracing of cargo, freight and cargo containers while in transit; monitoring and tracking of cargo, freight, and cargo container shipments; providing temporary use of non-downloadable computer software for tracking freight, processing shipments, preparing shipping invoices over computer networks, intranets and the internet; hosting of internet sites for third parties; conversion of data or documents from physical to electronic media; computer software design; data conversion of computer programs and data; online ordering services featuring cargo, freight and cargo container transportation and storage, warehousing; providing on-line communications links which transfer the website user to other local and global web pages.”

 

The wording “providing temporary use of non-downloadable computer software for tracking freight, processing shipments, preparing shipping invoices over computer networks, intranets and the internet; hosting of internet sites for third parties; conversion of data or documents from physical to electronic media; computer software design; data conversion of computer programs and data; online ordering services featuring cargo, freight and cargo container transportation and storage, warehousing; providing on-line communications links which transfer the website user to other local and global web pages” is classified incorrectly.  TMEP §§1401.02(a) and 1401.03(b).   Applicant must amend the application to classify the services in International Class 42. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The remainder of the wording in Class 35 is acceptable as written and classified.

 

International Class 38

The Class 38 services are currently identified as “the provision of electronic delivery and receipt of shipping instructions.”  This wording is unacceptable as indefinite.  “Provision” of the service is not the actual service applicant provides. It carries out the service of delivery documents via electronic transmission.   Therefore, applicant should delete the unnecessary wording “the provision of” and provide the common commercial name for the services.  Applicant may adopt the following suggestion, if accurate: “electronic delivery and receipt of shipping instructions” in International Class 38.

 

International Class 39

The Class 39 services are currently identified as “Cargo, freight and cargo container transportation by ship, rail and truck; transportation of goods of others by ship, rail and truck; cargo consolidation and handling services for the efficient packing of cargo containers; unloading cargo, freight and cargo containers; delivery and receipt of cargo and cargo containers to and from the terminal facility through the gates, warehouse or depot; freight forwarding services; rental of warehouse space; storage of cargo containers, freight and cargo; warehousing; providing facilities for cargo consolidation and handling, namely shipment of container goods by ship, rail and by truck; stevedoring freight, cargo and cargo containers to and from vessels; storage of cargo containers, freight and cargo for others and warehousing services; Cargo container leasing services; warehousing services, including, storage, distribution, pick-up, and packing for shipment of cargo, freight and cargo containers for others; providing information in the field of cargo, freight and cargo container transportation and storage by electronic means; providing interactive computer software in the field of cargo, freight and cargo container transportation and storage, and warehousing over computer networks, intranets and the internet; providing warehousing information over computer networks, intranets and the internet; providing links to websites of others featuring transportation of goods of others by ship, rail and by truck; providing links to websites of others featuring transportation of goods by ship, rail, and truck; all of the above services relating to warehousing services, including, storage, distribution, pick-up, and packing for shipment of cargo, freight and cargo containers for others; advisory and consultancy services relating to storage, transportation and delivery of freight, cargo, and cargo containers .”

 

The wording “cargo consolidation” is unacceptable as indefinite.  TMEP §1402.01.  “Consolidation” is not the name typically used to describe the service of uniting cargo.  Applicant must specify the nature of the cargo 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.

 

The wording “warehousing” is unacceptable as indefinite and redundant.  TMEP §1402.01. Applicant indicates the specific type of warehousing services provided throughout the Class 39 identification.  If applicant wants to keep warehousing without further explanation, then applicant must specify the common commercial or generic name for the services (e.g., warehousing services).  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

The wording “cargo container leasing services” is unacceptable as indefinite and may be beyond the scope of the identification as filed in the original application.  The applicant originally filed for “rental of storage space” and amended this wording to “cargo container leasing services.”  While the identification 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); TMEP §§1402.06 et seq. and 1402.07.  Applicant must clarify what the difference between rental and leasing services in the cargo industry is, if any, and whether or not cargo containers are a type of storage space. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).  If “cargo container leasing services” is a subset of “rental of storage space,” then applicant must identify the services in this manner.  Applicant may adopt the following suggestion, if accurate: “rental of storage space, namely cargo containers.” 

 

The wording “providing interactive computer software in the field of cargo, freight and cargo container transportation and storage, and warehousing over computer networks, intranets and the internet” is classified incorrectly. The proper classification for providing software for others to use via intranets is International Class 42. Applicant must amend the application to classify the services in International Class 42.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

International Class 42

The Class 42 services are currently identified as “Computer services, namely monitoring and reporting on the performance, availability, and errors of websites of others; the provision of software applications in relation to the provision and facilitation of warehousing services, including, storage, distribution, pick-up, and packing for shipment of cargo, freight and cargo containers for others.”

 

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 temporary use of non-downloadable computer software for tracking freight, processing shipments, preparing shipping invoices over computer networks, intranets and the internet” in International Class 42.

 

Suggested Identification of Services for All Classes

Applicant may adopt the following suggested identification of services entirely, 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

 

“customs clearance services; computerized tracking and tracing of cargo, freight and cargo containers while in transit; monitoring and tracking of cargo, freight, and cargo container shipments” in International Class 35; and/or

 

“rental of warehouses; electronic payment, including, electronic processing and transmission of bill payment data” in International Class 36; and/or

 

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

 

“cargo, freight and cargo container transportation by ship, rail and truck; transportation of goods of others by ship, rail and truck; cargo handling services for the efficient packing of cargo containers; unloading cargo, freight and cargo containers; delivery and receipt of cargo and cargo containers to and from the terminal facility through the gates, warehouse or depot; freight forwarding services; rental of warehouse space; storage of cargo containers, freight and cargo; warehousing; providing facilities for cargo consolidation and handling, namely shipment of container goods by ship, rail and by truck; stevedoring freight, cargo and cargo containers to and from vessels; storage of cargo containers, freight and cargo for others and warehousing services; rental of storage space, namely cargo containers; warehousing services, including, storage, distribution, pick-up, and packing for shipment of cargo, freight and cargo containers for others; providing information in the field of cargo, freight and cargo container transportation and storage by electronic means; providing warehousing information over computer networks, intranets and the internet; providing links to websites of others featuring transportation of goods of others by ship, rail and by truck; providing links to websites of others featuring transportation of goods by ship, rail, and truck; all of the above services relating to warehousing services, including, storage, distribution, pick-up, and packing for shipment of cargo, freight and cargo containers for others; advisory and consultancy services relating to storage, transportation and delivery of freight, cargo, and cargo containers” in International Class 39; and/or

 

“computer services, namely monitoring and reporting on the performance, availability, and errors of websites of others; providing temporary use of non-downloadable computer software for tracking freight, processing shipments, preparing shipping invoices over computer networks, intranets and the internet; hosting of internet sites for third parties; conversion of data or documents from physical to electronic media; computer software design; data conversion of computer programs and data; online ordering services featuring cargo, freight and cargo container transportation and storage, warehousing; providing on-line communications links which transfer the website user to other local and global web pages; providing interactive computer software in the field of cargo, freight and cargo container transportation and storage, and warehousing over computer networks, intranets and the internet” in International Class 42.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

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 APPLICATION

Applicant identifies services that fall into at least six (6) classes, but submitted fees for five (5) classes of services.  If applicant prosecutes this application as a combined, or six-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and

 

(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). 

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

INFORMATION REQUEST

As indicated in the discussion of International Class 39, applicant must clarify what the difference between rental and leasing services in the cargo industry is, if any, and whether or not cargo containers are a type of storage space. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).  If  there is a discernible difference in the cargo and freight transportation industry between rental and leasing or storage space and cargo containers, then applicant’s amended “cargo container leasing services” is unacceptable as beyond the scope of the original identification.

 

Failure to respond to a request for information can be grounds for refusing registration.  In re DTI P'ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003).  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record.  In re Planalytics, Inc., 70 USPQ2d 1453, 1457-1458 (TTAB 2004). 

 

If applicant has questions about its application or the Notice of Suspension, 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