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:

 

 

INTERNATIONAL REGISTRATION NO. 0976627.

 

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 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 United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, 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.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES

 

The identification of services must be clarified because the wording is indefinite and could include services in more than one International Class.  See TMEP §1402.01. 

 

In International Class 035, the wording “Organizational consultancy” must be clarified as being business in nature in order to remain in International Class 035.  Applicant may amend this wording to “Business organizational consultancy . . .”

 

In International Class 042, the wording “Technical consultancy in the field of the packaging” requires clarification because consulting services are classified according to the subject matter of the consulting service.  TMEP §1402.11(e).  Following are examples of proper classification:  “business consultation” -- International Class 35; “financial consultation” -- International Class 36; and “computer consultation” -- International Class 42.  Therefore, in order to enable proper classification and examination of the application, applicant must specify the subject matter of the “consulting” or “consultation” services.   Here, the wording “the field of the packaging” could encompass “merchandise packaging” in International Class 035 or “Packaging articles for transportation” in International Class 039 or “packaging design” in International Class 042.

 

Applicant may adopt the following identification, if accurate: 

 

 

            “Business organizational consultancy in the field of the packaging of goods, business organizational consultancy in the field of the packaging of pharmaceutical products” in International Class 035; and/or

 

            “Technical consultancy in the field of the packaging design for goods, technical consultancy in the field of the packaging design for pharmaceutical products” in International Class 042

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or 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 goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

ADVISORY REGARDING CLASS

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods by the International Bureau in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b).

 

If applicant has questions about its application or needs assistance in responding to this Office Action, please contact the assigned trademark examining attorney directly at the number below or at Tasneem.Hussain@uspto.gov. Please note, however, that substantive matters must be addressed in a formal manner; see below for further instructions on how to respond to this Office Action.

 

 

/Tasneem Hussain/

Trademark Examining Attorney

Law Office 105

(571) 272-8273

 

 

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.