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.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  79/033189

 

INTERNATIONAL REGISTRATION NO. 0909228.

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)   Attorneys in good standing with a bar of the highest court of any U.S. state, and

 

(2)   Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).  Canadian attorneys can only represent Canadian applicants.

 

37 C.F.R. §10.14; TMEP §602. 

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  TMEP §§602, 602.03, 603.05.

 

If not represented by an attorney, applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11. 

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

Search - Deferred

A search of the Office records is deferred until applicant responds to the issues raised in this Office action.  TMEP §704.02.

 

Entity

It is unclear if the designation “limited company” is a legal entity in the applicant’s country and clarification is required.  A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so.  The examining attorney should inquire further into the specific nature of a foreign legal entity if it is not clear that it is in fact a designation of legal entity in the particular country.   TMEP section 803.03(i).  Thus, the applicant must confirm that a “limited company” is an accepted foreign designation of the legal entity or amend the application to set forth the accurate legal entity.  For example, in this case, the applicant’s legal entity may be a Gesellschaft mit beschrankter Haftung (G.m.b.H.). 

 

Meaning/Significance

Applicant must specify whether the wording “TARGET” has any significance in the applicant’s trade or industry or as applied to any of the goods/services described in the application.  37 C.F.R. §2.61(b). 

 

Requirement for Information

THIS REQUIREMENT APPLIES TO CLASS(ES) 9 ONLY.

 

With respect to the goods in Class 9, the nature of the goods on which applicant intends to use its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); In re DTI P'ship LLP, 67 USPQ2d 1699, (TTAB 2003); TMEP §814.  Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods.  If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods. 

 

Identification of Goods

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN.

 

The wording “machine-readable data carriers of all types with programs installed; computer software of all types, in particular for commercial suggestion systems and ideas management” in Class 9 and the wording “operating instructions” in Class 16 is indefinite and requires clarification.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  TMEP §1402.01.

 

The goods include computer software.  However, the wording that describes the software is indefinite and must be clarified to indicate the purpose or function of the software.  If the software is field-specific, applicant must also specify the field of use.  TMEP §1402.03(d).  Clarification of the purpose, function or field of use is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).

 

The applicant may adopt the following, if accurate, specifying information where indicated:

 

Class 9:               machine-readable data carriers of all types with programs installed, namely computer software for (specify function) for use in the field of (specify); computer software for creating databases for businesses of commercial business suggestions and ideas for use in business management; data processing programs

 

Class 16:             accompanying printed material for data processing programs, namely manuals, catalogues, instructional manuals and operating instruction sheets

 

Class 41:            Training in the use of data processing programs

 

Class 42:            Consultancy in the use of data processing programs; computer programming

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/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 and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

Please note also that goods and/or services not set forth in the international registration cannot be added to the corresponding extension of protection application filed under Trademark Act Section 66(a).  The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  TMEP §§1401.03(d), 1401.04 and 1904.02(b). Thus, any indefinite goods/services may only be clarified to identify goods/services in the particular class where the indefinite goods/services were originally classified.

 

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.uspto.gov/netahtml/tidm.html.

 

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

 

 

 

 

/Mary Boagni/

Examining Attorney

Law Office 114

571-272-9130

Law Office 114 fax: 571-273-9114

 

 

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.uspto.gov/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.uspto.gov/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm

 

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