UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

OFFICE SEARCH:  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 704.02.   

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

Serial Number 78/342942

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by James M. Slattery on July 16, 2004, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS

 

The following claim of ownership is added to the record:

 

            Applicant is the owner of U.S. Registration Nos. 1894985, 2391792 and 2376858.

 

37 C.F.R. §2.36; TMEP §812.

 

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods is unacceptable as indefinite.  Applicant must specify the subject matter of the books, periodicals, catalogues, etc.  Applicant must clarify that it is providing access to databases located on a global computer network (or the Internet).  Maintenance of computer hardware is a Class 37, not Class 42 services.  The meaning of “management” in the Class 42 listing of services is unclear; “management” is generally a Class 35 business service and so applicant must clarify the exact nature of this service.  The meaning of creating and implementing computers is vague; if applicant is referring to the custom manufacture of computers, applicant must clarify this and classify the services in Class 40.  The applicant may adopt the following identification, if accurate.  TMEP §1402.01.

 

“Books, magazines, and periodicals, all featuring [specify the subject matter]; photographs; pictures; user manuals, instructional manuals, instructional guides, and data manuals, all featuring [specify the subject matter]; notebooks, envelopes; writing paper; posters; catalogues, brochures, and price lists, all featuring [specify the subject matter]; file folders; printed timetables; greeting cards; paper boxes; paper containers; paper cartons for delivering goods; paper bags for packaging; plastic bags for packaging; paper banners; paper tags, in International Class 16.”

 

“Installation of computer systems and [clarify “global network,” e.g. “computer networks”]; maintenance of computer systems, computer peripherals, computer hardware and computer networks and associated peripheral devices, in International Class 37.”

 

“Telecommunication services, namely, providing information via the Internet about telecommunication services; providing multiple-user access to databases on a global computer network, in International Class 38.”

 

“Custom manufacture of computers for others, in International Class 40.”

 

“Providing on-line [indicate specific nature of publication] in the field of [indicate subject matter of publication]; training in the use and operation of computers, computer graphics cards, optical drives and wireless devices; education services, namely conducting seminars, conferences and workshops in the field of computers, telecommunications and global networks, in International Class 41.”

 

“Computer services, namely, designing computers and computer peripherals for others related to operational and supporting services; computer systems analysis and computer network systems analysis; computer consultation; computer information technology consultation, in International Class 42.”

 

“Services for providing electronic business, namely, [specify the common commercial name of the service], in International Class 00” (class to be determined by the nature of the services).

 

“Computer and information technology management, namely, [specify the common commercial name of the service], in International Class 00” (class to be determined by the nature of the services).

 

The applicant may want to consult The Acceptable Identification of Goods and Services Manual, published by the U.S. Patent and Trademark Office which is available on-line at www.gov.uspto.report/web/offices/tac/doc/gsmanual/.   As set forth in the TMEP, this manual "contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney."  TMEP sec. 1402.04.

 

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.

 

COMBINED APPLICATION

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

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

 

Applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

ADVISORY NOTE

 

The description of the mark provided by applicant is unnecessary and will not be printed in any registration that may issue from this application.

 

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

 

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(703) 308-9102 ext. 134

(703) 746-8102 (fax)

 

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm