UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/047766
MARK: SLM
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Bastian BRÜBACH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0947588.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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 United States Patent and Trademark Office (USPTO) in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and
(2) Canadian attorneys who represent applicants residing in Canada and who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §10.14; TMEP §602.
Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO. See TMEP §602.06(b). 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, 603.04, 605.05(a).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
NO CONFLICTING MARK NOTED
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.
IDENTIFICATION OF GOODS/SERVICES
International Class 9
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 wording “MAGNETIC RECORDING MEDIA” in the identification of goods is indefinite and must be clarified because applicant must specify the particular type of recording media and whether it is pre-recorded or sold blank. If the recording media is pre-recorded, applicant must indicate the subject matter. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate:
Magnetic recording media, namely, pre-recorded video cassettes and audio cassettes featuring {indicate subject matter}.
Likewise, the wording “RECORDED SOUND AND IMAGE CARRIERS” in the identification of goods is indefinite and must be clarified because applicant must specify the subject matter. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate:
Prerecorded magnetic sound and image carriers featuring {indicate subject matter}
The wording “RECORDS; MUSIC TAPES, COMPACT DISCS (CDs), DIGITAL VIDEO DISCS (DVDs)” in the identification of goods is indefinite and must be clarified because applicant must specify whether the goods are pre-recorded or sold blank. If the goods are pre-recorded, applicant must indicate the subject matter. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate:
Phonograph records, audio tapes, compact discs (CDs) and digital video discs (DVDs) featuring music.
The wording “DATA CARRIERS OF ALL KIND” in the identification of goods is indefinite and must be clarified because applicant must specify the particular type of data carriers and whether they are pre-recorded or sold blank. If the data carriers are pre-recorded, applicant must indicate the subject matter. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate:
Blank magnetic data carriers.
Prerecorded magnetic data carriers featuring {indicate subject matter}.
International Class 16
The identification of goods and services contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
The wording “PRINTED MATTER” in the identification of goods is indefinite and must be replaced with the common name of the publication, i.e. pamphlets, brochures, newsletters, journals, magazines, etc. Applicant must also specify the subject matter or field of use of the publications. TMEP §1402.03(e).
The wording “JOURNALS” in the identification of goods is indefinite and must be clarified because applicant must specify whether the goods are blank writing journals or journals concerning a subject matter. TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate:
Blank writing journals.
Journals concerning {specify type or subject matter, e.g., medical, legal}.
The wording “BOOKS” in the identification of goods is indefinite. Applicant must specify the subject matter or field of use of the books. TMEP §1402.03(e).
The wording “COMICS” in the identification of goods is indefinite and must be clarified. Applicant must indicate whether the goods are comic books or comic strips. TMEP §1402.01.
The wording “SIGNS” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. TMEP §§1402.01 and 1402.03. Applicant may adopt the following identification of goods, if accurate:
Printed paper signs.
International Class 41
The wording “PUBLISHING SERVICES (EXCEPT PRESSWORK) in the identification of services is indefinite and must be clarified. TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade. Applicant may adopt the following identification, if accurate:
Electronic publishing services, namely, publication of text and graphic works of others on {indicate format, e.g., CD, DVD, on-line} featuring {indicate specific subject matter}.
Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications.
Publishing of books, magazines.
The wording “ENTERTAINMENT; SPORTING AND CULTURAL ACTIVITIES” in the identification of services is indefinite and must be clarified. TMEP §1402.01. Applicant must specify the common commercial or generic name for the 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 consumers. Applicant may adopt the following identification, if accurate:
Entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows.
Organizing community sporting and cultural events.
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 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.
ADVISORY – CLASSIFICATION FOR GOODS/SERVICES CANNOT BE CHANGED
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).
ENTITY (LEGAL NATURE) AND COUNTRY OF ORGANIZATION OMITTED
The application does not include applicant’s “Legal Nature” and “Legal Nature: Place Incorporated.” Applicant must specify its entity type (“Legal Nature”) and citizenship (“Place Incorporated”). 37 C.F.R. §2.32(a)(3); TMEP §§803.03, 803.04.
Acceptable entity types include an individual, a partnership, a corporation or a joint venture. See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation or association, applicant must set forth the country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04. And if applicant is a foreign partnership or joint venture, then applicant must specify the country under whose laws the partnership or joint venture is organized. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b), 803.04.
SIGNIFICANCE OF LETTERS
Applicant must specify whether the letters “SLM” have any significance in applicant’s trade or industry or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
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.
/Maria-Victoria Suarez/
Trademark Attorney
Law Office 102
571-272-9264
maria-victoria.suarez@uspto.gov
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.