Offc Action Outgoing

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:

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.

However, in order to continue the registration process, applicant must respond to the following procedural requirement(s).

Identification Of Services

The identification of services is unacceptable because some of the services are indefinite or overly broad and require further clarification. TMEP §1402.11. Applicant must amend the identification of services to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the services and intended users. TMEP §1402.01.

In particular, the applicant must clarify the term “marketing,” which encompasses multiple services under USPTO practice. The applicant may substitute “business marketing services; marketing consulting.”

Applicant must also clarify the final clause of the services listed in Class 45. See below.

The usage of commas and semi-colons makes part of the identification of services in Class 38 unclear. This portion is highlighted below, and use of semi-colons to separate the entries is recommended.

Some of the goods/services, without clarification, may be classified in different international classes. However, applicant must note that 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). Therefore, please be advised that amendments to the goods/services below must stay within the originally listed class.

For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below.

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

International Class 35: Business consultancy; employment agencies; employment agencies featuring an online virtual job market on the internet; business marketing services; marketing consulting; advertising, employment agencies, including on the internet; electronic data processing for others; advertising and publicity services, namely, disseminating private and commercial advertising material including classified advertisements and job advertisements in printed or electronic media; sales promotion for the goods and services of others, including on the internet; computer-aided database management

International Class 38: Operating and presentation of chatlines, namely, providing voice chat services; providing internet chatrooms; providing on-line forums for transmission of messages among computer users concerning news, sporting-events, educational courses, educational activities, hotel accommodation, real estate, apartment time sharing, rental of real estate, real estate sales notices, job-search notices, job-offer notices, job hiring services, job-hiring conferences, employment, curriculum vitae, volunteer work projects for charitable organizations, job hiring services, community art festivals, miscellaneous sporting events, family, movie entertainment, leisure time, romance, work, health, politics and art; news agency and press report services, namely, the transmission of news items to news reporting organizations; electronic data transmission of private and commercial advertisements of all kinds including classified advertisements and job advertisements; web-messaging; providing remote Internet access; [use semicolons after each of the foregoing] providing interactive online electronic bulletin boards for transmission of messages among computer users concerning lists of jobs, job hiring, event directories, business news, and collections of curriculum vitae; providing interactive online electronic bulletin boards for transmission of messages among computer users concerning classified advertisements, news directories, job hiring events, educational courses, job hiring conferences, educational activities, hotel accommodation, real estate, apartment time sharing, rental of real estate, real estate sales notices, job search notices, employment, curriculum vitae, volunteer work projects for charitable organizations, job hiring services, community art festivals, miscellaneous sporting events, politics, family movie entertainment and art; providing electronic bulletin boards for transmission of messages among users in the field of general interest to the public; providing on-line forums for transmission of messages among computer users concerning the transmission of news in relation to health, family, art, politics, leisure time, romance and work; electronic mail services; electronic mail services for subscribers; electronic transmission of messages, data and images; online telephone directory services, namely, telephone call completion services for directory assistance customers; providing access to an online computer database and searchable online computer databases containing classified advertisements and directories with news, sporting events, educational courses, job hiring conferences, educational activities, hotel accommodation, real estate, apartment time sharing, rental of real estate, real estate sales notices, job search notices, employment, curriculum vitae, volunteer work project for charitable organizations, job hiring services, community art festivals, miscellaneous sporting events, politics, family movie entertainment and art; providing access to an online computer database and a searchable online database containing information on health, art, family, politics, leisure time, romance and work

International Class 45: Licensing of computer programs and databases for use by others and also for use on the Internet and other data networks [or specify “in the internet and other data networks” language]

The services are acceptable as listed in Class 42.

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

The applicant is strongly encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html. The Manual includes explanations and notices of classification policy and sets out acceptable language for identifying goods and services of various types.

Significance of Mark

Applicant must specify whether the wording “YALWA” has any significance in the relevant trade or industry or as applied to the services described in the application. 37 C.F.R. §2.61(b).

This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02. If the applicant does not provide the information required herein, registration may be refused. The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration. See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).

Response

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

/Peter Bromaghim/

Trademark Examining Attorney

Law Office 107

Phone: (571)-272-8912

Fax: (571)-273-8912

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.