Offc Action Outgoing

The IB (International Bureau of the World Intellectual Property Organization) has clarified for the record that the applicant’s identification of goods and services are as follows:

Electronic intelligent home and office systems, namely, access control systems of persons, security, monitoring and administration systems of building and premises, controlling systems of locking, monitoring and access control between different rooms; electronic devices and systems for computerized control and monitoring devices; computer software (recorded), in Class 9;

Telecommunications system installation, including cabling and hardware adjustments, in Class 37;

Telecommunications, in Class 38;

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design of computer software; installation of computer software; design of telecommunication and information technology solutions, in Class 42.

Accordingly, this Supplemental Office Action is issued to address all refusals and/or requirements.

Search Results / No Conflicting 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.

Requirements to be Addressed

Applicant must respond to the requirement(s) set forth below.

Entity Type (Legal Nature) and Country of Organization Omitted - §66(a) Applicant

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. If applicant’s entity type is a partnership or joint venture, 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.

Description of the Mark Required

Applicant must submit a concise description of the mark. 37 C.F.R. §2.37; see TMEP §§808 et seq. The following is suggested:

The mark consists of ____________ [describe all wording and elements in the mark in simple terms e.g. the stylized word “YOGA” with the “Y” as a stick man standing on his head].

Identification of Goods and Services Indefinite – Clarification Needed

The identification of goods and/or services is indefinite and must be clarified. See TMEP §1402.01.

Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.

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 intelligent home and office systems, namely, access control systems comprised of __________ [specify the major component parts of the “systems” – with the first listed item being a Class 9 type goods] for ____________ [specify function e.g. for controlling accessing to and from buildings and premises and monitoring of persons and monitoring of administration systems] and operating controlling systems of locking, monitoring and access control between different rooms; electronic devices, namely, _________ [specify the “devices” by their common commercial name(s) e.g. remote controls] and systems comprised of ________ [specify the major component parts of the “systems” – with the first listed item being a Class 9 type goods] for computerized control and monitoring devices; computer software recorded on _______ [specify medium e.g. DVDs] for ___________ [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use], in Class 9;

Telecommunications system installation, namely, installing telecommunications cabling, ____________ [specify other “telecommunication items” being installed e.g. telephones, telephone poles] and providing __________ [specify type of “hardware” e.g. computer, telecommunications] hardware maintenance services, in Class 37;

Telecommunications services, namely, __________ [further specify – see attached Id Manual listing for examples of acceptable Ids], in Class 38;

Scientific and technological services, namely, ___________ [further specify the “scientific and technological services” by their common commercial names(s)] and __________ [specify type of “research” e.g. scientific research] research and design for others relating thereto; industrial analysis and research services in the field of ________ [indicate subject matter of the analysis and research – must be a Class 42 type of analysis and research]; design of computer software; installation of computer software; design of telecommunication goods and information technology consultation [note: the wording “solutions” is not acceptable as this wording is inherently indefinite and may reference goods or services – which is not acceptable – the wording “consultation” has been suggested instead], in Class 42.

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.

Identifications 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(a), 1904.02(b). In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods and/or services in the international class(es) designated in the application as filed. See TMEP §§1402.03(d), 1402.07(a).

Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.

See attached (to the first Office Action) Id listings re: “access” and “security” and “software” and “home/office” (for Class 9) and “telecommunications” (for Class 38) and for acceptable identifications, level of specificity required and proper classification, as needed.

Significance of the Mark – Explanation of Mark’s Significance Required

Applicant must explain whether “Yoga” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.

Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:

(1) Is yoga the subject matter of any of applicant’s goods and/or services?

(2) Specifically, does applicant’s software feature “yoga instruction”?

(3) If applicant’s registration includes services, do any of the services revolve around the subject matter of yoga?

Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

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

/Gina M. Fink/

Trademark Attorney - Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109

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.