Offc Action Outgoing

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  78/906805

 

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

 

Search Results

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.

 

Recitation of Services

The wording used to describe the services in both International Classes 35 and 42 needs clarification because the wording “to others” has created an ambiguity.  Specifically, it is unclear whether applicant’s services relate to the applicant’s intellectual property, or intellectual property owned by third parties.  Please note, to be a service, the activities described in the application must be for the benefit of others.  Services such as the marketing, sale and protection of the applicant’s own intellectual property do not benefit others and so are not a valid service.  TMEP §1301.01(a)(ii). 

 

In Class 35, applicant may substitute the following wording, if accurate “business marketing consulting services for marketing intellectual property of others, namely, patents, trademarks, copyrights and proprietary information to others.”  TMEP §1402.01.  In the alternative, applicant may change the wording “to others” in the present identification to the wording “of others,” if accurate.  TMEP §1402.01. 

 

In International Class 42, the wording “intellectual property consulting services; licensing of intellectual property consisting of patents, trademarks, copyrights and proprietary information to others” is acceptable.  The remaining wording “protection and sale of intellectual property consisting of patents, trademarks, copyrights and proprietary information to others” needs clarification because it is too broad and could include services classified in other international classes.  Specifically, it is unclear whether applicant is offering consulting services in the field of the protection and sale of intellectual property and proprietary information and/or legal services and/or intellectual property management services, all of which are classified in Class 42; or other types of protection services, such as trademark monitoring, which are properly classified in Class 35.  Alternate identifications are suggested below.  TMEP §§1402.01 and 1402.03. 

 

Please note, the term “sale” as contained in the present identification “sale of intellectual property consisting of patents, trademarks, copyrights and proprietary information to others” is refused.  Applicant must amend the identification of services to delete the term “sale” and to indicate with greater specificity the nature of the service, e.g., on-line retail store services featuring intellectual property.  The term “sale” in the identification of services is unacceptable because selling is not considered a service that is rendered for the benefit of someone other than applicant.  In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); TMEP §§1402.01 and 1402.03. 

 

Registrations do exist for “sales” and similar activities focusing on “sales” terminology.  The “sales” registrations are an aberration, however, and the practice of using that term has been discontinued, except in cases in which the primary activity of the applicant does not involve sales.  Examples of such activities are “training courses in the field of sales and merchandising” and “business consultation in the field of sales promotion.”  Under the reasoning given above, the recitation of services containing the term “sale” is unacceptable and should be amended to reflect the type of service being rendered for the benefit of someone other than the applicant.  For example, if applicant is providing legal services relating to the sale of intellectual property, then the identification should be amended accordingly.  If applicant is providing consulting services relating to the marketing of intellectual property, then these services are already covered by the services presently identified in Class 35.

 

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

 

INTERNATIONAL CLASS 35:

Business marketing consulting services for marketing intellectual property of others, namely, patents, trademarks, copyrights and proprietary information to others. 

 

INTERNATIONAL CLASS 42:

Intellectual property consulting services; licensing of intellectual property consisting of patents, trademarks, copyrights and proprietary information; [please specify the type of service provided for the benefit of others, e.g., “intellectual property consulting services,” “legal services”] in the field of protection and sale of intellectual property of others consisting of patents, trademarks, copyrights and proprietary information to others.

 

TMEP §1402.01.

 

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.

 

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.

 

Disclaimers

Applicant must disclaim the descriptive wording “INTELLECTUAL PROPERTY” and “IP” apart from the mark as shown because they merely describe the generic name for the subject matter of applicant’s services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  Applicant is seeking registration of the mark INTELLECTUAL PROPERTY IDEAS PROFITS I IP P & design for intellectual property consulting services, business marketing consulting services for marketing of intellectual property and other services that relate to intellectual property.  Because applicant’s services relate to intellectual property, the terms “intellectual property” and “IP” identify the generic name for the subject matter of applicant’s services and must be disclaimed. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “INTELLECTUAL PROPERTY” and “IP” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney. 

 

/Kate DuBray/

Trademark Examining Attorney, Law Office 105

Tel: (571) 272-4815

Fax: (571) 273-4815

 

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.