UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 7/2/2008

 

THIS IS A FINAL ACTION.

 

 

This Office action is in response to applicant’s communication filed on 06/10/08.

 

In the first Office Action, dated 12/10/08, the examining attorney required that applicant amend the indefinite identification of services, provide its legal nature and place of incorporation, and submit a claim of ownership of prior registrations.

 

In its response, dated 06/10/08, applicant amended the identification of services. However, applicant’s amendment of the identification of services renders the identification indefinite. Accordingly, the examining attorney continues and maintains said requirement, and now makes it FINAL. In addition, applicant provided its legal nature and place of incorporation, and submitted a claim of ownership of prior registrations, all of which are accepted by the examining attorney and are now made of record.

 

The following requirement is now made FINAL:  Identification of Services is Indefinite.  See37 C.F.R. §2.64(a).

 

 

FINAL REQUIREMENT – Identification of Services is Indefinite – Particular Services

 

In the first Office Action, the examining attorney explained that the wording “Navigation services” and “point-of-interest information” in the identification of services is indefinite and must be clarified because it lacks the requisite specificity as to the commercial nature of said services.  TMEP §§1402.01 and 1402.03. 

 

In addition, the examining attorney pointed out that the wording “recreational services” in the identification of services needs clarification because it is too broad and could include services classified in other international classes.  TMEP §§1402.01 and 1402.03.

 

In its response, applicant amended the identification of services to read:

 

Navigational services, namely, providing mapping, global positioning and navigation information via mobile telephone, wireless and satellite networks; provision of information regarding travel, traffic and traffic congestion, means of public transport, recreational activities and geographic point of interest information via telecommunications networks, wireless local area networks, mobile telephones and communication equipment, wireless navigation devices and handheld computers; in International Class 39.

 

While applicant’s amendments to the originally indefinite wording “Navigation services” and “point-of-interest information” in the identification of services are acceptable, the amended wording “providing information regarding….recreational activities” remains indefinite, as information services are classified according to the subject matter of the information provided, and the wording “recreational activities” is indefinite and broad enough to encompass subject matter, such as “sports” or “recreational fishing”, which is properly classified in International Class 41. TMEP §1402.11(b). 

 

The examining attorney reiterates that the international classification of services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the services in the corresponding international registration.  TMEP §§1401.03(d) and 1904.02(b). 

 

Therefore, any modification to this wording must identify services in International Class 39, the classification specified in the application for these services. 

 

Applicant may substitute the following wording, if accurate: 

 

Navigational services, namely, providing mapping, global positioning and navigation information via mobile telephone, wireless and satellite networks; provision of information regarding travel, traffic and traffic congestion, means of public transport, recreational activities in the nature of {specify recreational activities properly classified in Class 39, e.g. travel tours} and geographic point of interest information via telecommunications networks, wireless local area networks, mobile telephones and communication equipment, wireless navigation devices and handheld computers; in International Class 39.  See TMEP §§1402.01, 1402.03.

Scope of Services (Advisory)

 

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.  See TMEP §1402.04.

 

Proper Response to Final Office Action

 

If applicant does not respond within six months of the mailing date of this final Office action, the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment: “providing information regarding…recreational activities”. The application will then proceed forward for the remaining services, namely, “Navigational services, namely, providing mapping, global positioning and navigation information via mobile telephone, wireless and satellite networks; provision of information regarding travel, traffic and traffic congestion, means of public transport, and geographic point of interest information via telecommunications networks, wireless local area networks, mobile telephones and communication equipment, wireless navigation devices and handheld computers”; in International Class 39.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by: 

 

(1)   Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)   Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Brian P. Callaghan/

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4906

Fax: (571) 273-4906

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/2/2008 FOR

APPLICATION SERIAL NO. 79045926

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=79045926&doc_type=OOA&mail_date=20080702 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/2/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.