Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

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(a), 2.65(a); TMEP §§711, 718.03.

Search of the Database of Marks

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

SUMMARY OF ISSUES that applicant must address:

Identification of Goods and Services
Description of the Mark
Color Claim

Identification of Goods

The identification of goods is unacceptable.

The identification of goods in International Class 7 includes a duplicate entry of the wording “letter sorting machines.” Applicant may either (1) modify one of these two identical descriptions of goods such that it will no longer be duplicative, or (2) delete one entry. See TMEP §707.02. However, if applicant modifies the goods, applicant may do so only to clarify or limit them; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

The following wording in International Class 9 is indefinite and must be clarified: “Postal scales, apparatus to check mail franking,” “apparatus, instruments, organs and devices for the generation, calculation, control, inputting, storage, conversion, processing, collection, transmission, switching and receipt of data, information, signals or messages, computers and computer peripheral devices, especially printers,” “counter equipment for franking applications, namely, apparatus to check franking specifically designed to be placed on counters,” “electronic apparatus for the franking (payment and recording) of mail and transport costs (private dispatch services), for letters and parcels, including by remote control and downloading, via the Internet and intranet networks; electronic coin-operated booths for franking letters and parcels (sent by private mail services or transporters); software (recorded programs),” “electric apparatus for parcels and mail,” “software and telecommunication apparatus, including modems to enable connection to databases, computer networks, global computer networks as well as the Internet,” “software for commercial use,” “interfaces (data processing equipment),” “readers (data processing equipment),” “computer programs (downloadable software),” “recorded computer programs,” “electronic publications (downloadable) provided on-line from databases or the Internet,” “pre-recorded computer data media,” “magnetic and optical data media,” and “software platforms.” See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods and/or the main purpose and intended uses of the goods. The examining attorney has made suggested amendments below.

The following wording in International Class 16 is indefinite and must be clarified: “Equipment, apparatus and devices for processing mail, including franking machines, franking bases and heads, arts and spare parts of machines for franking,” “printing products (printed matter),” “labels, not of textile,” “manuals handbooks,” “booklets,” and “bags (envelopes, pouches) of paper or plastics, for packaging.” Applicant must specify the common commercial or generic name for the goods and/or the main purpose and intended uses of the goods. The examining attorney has made suggested amendments below.

The identification of goods in International Class 16 includes a duplicate entry of the wording “address stamps.” Applicant may either (1) modify one of these two identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete one entry. See TMEP §707.02. However, if applicant modifies the goods, applicant may do so only to clarify or limit them; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

The wording “sealing machines for offices” in the identification in the application is indefinite and must be clarified. See TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the wording in International Class 16 is indefinite and does not appear to describe any goods in that class. See TMEP §1904.02(c)(iii).

An acceptable identification of goods and/or services is required in a U.S. application based on Trademark Act Section 66(a). See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01(c). For Section 66(a) applications, the scope of the identification for purposes of amendment is limited by the international class assigned to the goods and/or services by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). Additionally, an applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

Applicant may respond by amending this wording to clarify the nature of the goods and/or services; however, any future amendment to the identification must identify goods and/or services within International Class 16 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted. TMEP §§1402.01(c), 1904.02(c).

Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).

If applicant believes classification by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iv), (e)(iii).

The following wording in International Class 36 is indefinite and must be clarified: “Financial services” and “leasing.” See TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose, channels or trade, and the intended consumers. The examining attorney has provided specific suggestions below.

The following wording in International Class 38 is indefinite and must be clarified: “Telecommunication services, telecommunication services via computer networks, services providing access to computer telecommunication networks, communication services via computers grouped on a global communication network (the Internet) or to a private or restricted access network (intranet type),” and “supply (transmission) of information on the transport of letters and parcels.” See TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose, channels or trade, and the intended consumers. The examining attorney has provided specific suggestions below.

In the identification of services in, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a). If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names. See id. For example, in International Classes 38 and 39, applicant uses the wording “especially,” which suggests that Applicant may use other means for providing its services not specified in the identification. Applicant also uses the term “or” in Classes 38 and 39, which indicates that Applicant may or may not provide the services on either side of the term “or.” This language is indefinite and must be clarified. Applicant may adopt the examining attorney’s suggested amendment below, if accurate.

The wording “transport organization services” and “Deliveries in all forms, especially via transportation to the recipient or a point-of-sale or intermediary depot, as a result of orders, particularly through the Internet, computerized or not, including on behalf of goods suppliers, through the Internet or via any other computer, communication or other means, and their clients, individuals or institutions;” in the identification of goods is indefinite and must be clarified because Applicant must specify the nature of the services as well as their main purpose. See TMEP §1402.01. The examining attorney has provided specific suggestions below.

The wording “software maintenance” and “research and expertise services in the field of mail and parcel processing techniques” is indefinite and must be clarified because Applicant must specify the nature of the services as well as their main purpose. See TMEP §1402.01.

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id.

For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class. Id. However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” Id.

Applicant may adopt the following identification with the necessary information supplied (as indicated in bold in the curly brackets), if accurate:

Class 7: Machines for processing mail, in particular folders, inserters, parts and spare parts of such machines; letter sorting machines; splitters, namely, paper processing machines for automatically separating computer-produced documents in a continuous strip; extractors, namely, machines used for opening letters and automatically extracting the contents; automatic distribution machines for mail and parcels; addressing and bar code equipment for mail applications, namely, addressing and encoding machines

Class 9: Postal scales, namely, weighing apparatus to check mail franking; bar code readers; recorded software for managing mail dispatch (letters, messages, parcels, newspapers), franking and the processing of all related documents; apparatus, instruments, organs and devices, namely, {specify common commercial or generic name for “apparatus, instruments, organs, and devices,” e.g., computers, downloadable software, electronic calculators} for the generation, calculation, control, inputting, storage, conversion, processing, collection, transmission, switching and receipt of data, information, signals or messages; computers and computer peripheral devices; printers; counter equipment for franking applications, namely, portable computer apparatus to check franking specifically designed to be placed on counters; electronic apparatus, namely, {specify generic name for apparatus, e.g., downloadable software, printers} for the franking (payment and recording) of mail and transport costs (private dispatch services), for letters and parcels, including by remote control and downloading, via the Internet and intranet networks; electronic coin-operated booths for franking letters and parcels (sent by private mail services or transporters); downloadable computer software (recorded programs), namely, {specify main purpose, field, and intended uses of software, e.g., to calculate the cost to ship mail and parcels}; electric apparatus for parcels and mail, namely, {specify electric apparatus, e.g., postal scales for weighing packages, bar code readers}; software for database management; computer software for synchronizing data between hand-held or portable computers and host computers; computer operating system software; telecommunication software for electronic transmission of documents and facsimile transmission; software and telecommunication apparatus, namely, modems to enable connection to databases, computer networks, global computer networks as well as the Internet; software for use in automating and managing business processes; computer software for facsimile, e-mail, voice mail and Internet messaging; software for commercial use, namely, {specify main purpose, field, and intended uses of software, e.g., to track mail and parcels in transport}; computer hardware, namely, computers, disk changers (data processing equipment), computer peripheral devices, computer keyboards, interfaces (data processing equipment), namely, {specify common commercial or generic name for interfaces, e.g., mobile computers, mobile phones}; digital readers (data processing equipment), mice (data processing equipment); software, namely, {specify main purpose, field, and intended uses of software, e.g., to track mail and parcels in transport}; hand-held computers; portable computers; computer programs (downloadable software), namely, {specify main purpose, field, and intended uses of software, e.g., to track mail and parcels in transport}; recorded computer programs, namely, {specify main purpose, field, and intended uses of software, e.g., to track mail and parcels in transport}; computer programs and software for image processing used for mobile telephones; electronic publications (downloadable) provided on-line from databases or the Internet in the field of {specify the main purpose, field, or intended uses or users of the publications}; computer peripherals; pre-recorded computer data media, namely, {specify common commercial name, e.g., pre-recorded DVDs}; magnetic and optical data media, namely, {specify common commercial name, e.g., CDs and DVDs}; software platforms, namely, software platforms for {indicate main purpose, field, and intended users of software platforms}; downloadable software for the supply and monitoring of information relating to the distribution and delivery of coin-operated apparatus

Class 16: Equipment, apparatus and devices for processing mail, namely, franking machines, franking bases and heads, arts and spare parts of machines for franking; letter openers; postal machines for post offices, namely, distribution machines for postal applications, counter equipment for franking applications, namely, machines for franking specifically designed to be placed on counters; printing products (printed matter), namely, {specify printing products, e.g, bond paper, boxes of paper}; envelopes; labels, not of textile, namely, {specify type of labels, e.g., address labels, adhesive labels, mailing labels, paper labels}; wrapping paper; address stamps; manuals and handbooks, namely, manual and handbooks {specify main purpose, subject matter, field, and intended uses}; booklets in the field of {specify field, e.g., mail delivery and transportation}; paper bags, namely, envelopes and pouches for packaging; plastic bags, namely, envelopes and pouches for packaging; sealing machines for offices, namely, {specify good properly classified in Class 16 within the scope of this identification}

Class 20: Office furniture especially designed for mail processing equipment, apparatus and devices

Class 35: Services for the selection and processing of private and company addresses by means of computer networks; Assistance and consulting services in the field of mail management; Assistance and consulting services for business management in the field of logistics, transport, and transport of merchandise, parcels and mail; document reproduction services; drawing up statistics; assistance to companies in optimizing parcel and mail dispatch rates and in the management of their spending, these services can be provided online; computerized file management; compilation of information into computer databases, these services can be provided online; assistance to companies in managing their dispatch services for letters or parcels, these services can be provided online; administrative organization of the transport, delivery, distribution, sorting, carriage and storage of goods and parcels; retail and wholesale of postal scales, apparatus to check franking, bar code readers, software, machines for processing mail (folders, inserters), machines for sorting letters, envelopes, wrapping paper, bags (envelopes, pouches) of paper or plastic for packaging

Class 36: Financial services, namely, financial account management services for remote franking of letters and parcels; postal credit recharging services; services for processing transfers and cost deductions of franking letters and parcels; leasing, namely, rental with or without promise of sale of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail, of all plants, all workshops, offices and premises; portfolio management of shares and securities and operations relating thereto, management of all buildings; providing personnel for others for performing mail processing operations; customs brokerage

Class 37: Installation, maintenance and repair of all machines, all devices, apparatus and equipment in connection with mail processing

Class 38: Telecommunication services, namely, telecommunication services via computer networks for providing access to computer telecommunication networks; communication services via computers grouped on a global communication network (the Internet) and to a private or restricted access network (intranet type); telecommunication services providing means of access to a server for services in the fields of processing, logistics and transport of merchandise, parcels and mail; communications by computer terminals; electronic mail, electronic messaging and transmission of information by electronic means, by global telecommunication networks, (such as the Internet) or private or restricted access networks (such as the Intranet); communication between computer terminals; transmission of information accessible by access code to computer or data communication databases and database servers; services for transmitting and broadcasting data, sounds, images and signals; telecommunication transmission of information on the transport of letters and parcels via {specify method of transmission, e.g. via a global computer network}

Class 39: Transport, delivery, distribution and carriage of goods, mail and parcels; packaging and storage of goods, mail and parcels; consulting and organization services in the field of mail and parcel transport; freighting; rental of transport vehicles; sorting and storage of goods, mail and parcels; Non-electronic deliveries of {specify nature of deliveries, e.g., of goods, of messages} via transportation to the recipient or a point-of-sale or intermediary depot, as a result of orders, the orders received particularly through the Internet, computerized or not, including on behalf of goods suppliers, through the Internet or via any other computer, communication or other means, and their clients, individuals or institutions; transport information; physical storage of electronically-stored data or documents; freight brokerage; transport brokerage; corporate assistance for managing the dispatch of letters or parcels, with these services also available online; rental without commitment to sell of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail; tracking during transport by the electronic location of the destination of products and goods, particularly documents, packages, parcels; rental of storage containers; computer-assisted mail franking; mail franking via the Internet

Class 42: Design and development of computer software; computer software maintenance; computer software research and expertise services in the field of mail and parcel processing techniques; consulting and assistance services for the installation, maintenance and updating of systems (software) for the electronic processing of data for tracking, monitoring and locating parcels, mail and pallets during their processing, transport and delivery; consulting services for the installation of systems (software) for the electronic processing of data for tracking and locating packages, mail and pallets during their transport and delivery; services for the conversion of computer programs and data; services for the conversion of data and documents from physical to electronic media

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Description of Mark

The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).

Therefore, applicant must provide a description of the applied-for mark. The following is suggested:

The mark consists of the wording “NEOPOST” in light green with four connecting light green lines appearing in the outline of an envelope above the wording.

Color Claim

Generic color names must be used to describe the colors in a color claim and mark description, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).

Therefore, applicant must provide a statement claiming the generic color light green. Applicant may adopt the following language, if accurate:

The color light green is claimed as a feature of the mark.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

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

/gaynne g zimmerman/

Examining Attorney

Law Office 120

(571) 272-4027

gaynne.zimmerman@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.