Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods and services in the application:

Class 9: Interactive data transfer apparatus, namely, interactive display cases for museums and interactive display windows for museums;

Class 20: Exhibitors (terms considered too vague by the International Bureau - rule 13 (2) (b) of the Common Regulations); interactive museum display windows

Class 38: Virtual structures for real-time interaction between computer users (terms considered too vague by the International Bureau - rule 13 (2) (b) of the Common Regulations); interactive transmission and communication services

Class 41: Cultural information services through interactive information systems;

See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.

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

SUMMARY OF ISSUES:

Identification of Goods and Services

SEARCH OF OFFICE’S 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).

IDENTIFICATION OF GOODS AND SERVICES

The wording “Interactive data transfer apparatus, namely, interactive display cases for museums and interactive display windows for museums” in the identification of goods in International Class 9 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, goods that are primarily display cases are in International Class 20 and goods that are primarily electrical apparatus such as computers or touch screens are in International Class 9. Applicant must amend this wording to identify goods that are properly classified in Class 9.

Similarly, the wording “museum display windows” in Class 20 must be clarified because it is not clear what the goods are and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). Windows are generally classified according to their material composition, e.g. metal windows in Class 6 and non-metal windows in Class 19, and display cases are classified in Class 20. Applicant must amend this wording to identify goods that are properly classified in Class 20.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Classes 9 and 20 only, the classes specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).

The wording “exhibitors” in the identification of goods in Class 20, “virtual structures for real-time interaction between computer users” and “interactive transmission and communication services” in the identification of services in Class 38, and “cultural information services through interactive information systems” in the identification of services in Class 41 is indefinite and must be clarified because it does not clearly state the nature of the goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Finally, the identification of goods and services contains parenthetical language inserted by the International Bureau because the IB was not able to determine if the classification assigned to particular goods and/or services by an applicant’s Office of origin was correct. See TMEP §1904.02(c). Specifically, the identifications of “exhibitors” in Class 20 and “virtual structures for real-time interaction between computer users” include the following parenthetical language inserted by the IB: (terms considered too vague by the International Bureau - rule 13 (2) (b) of the Common Regulations). This language is not part of the identification and will be removed. Id. It will not appear on any U.S. registration certificate that may issue. See id.

Applicant may adopt the following wording in International Classes 9, 20, 38, and 41, if accurate (comments and suggested changes shown in bold, deletions in ~~strikethrough~~):

Class 9: Interactive data transfer apparatus, namely, {specify a type of electrical or scientific apparatus in Class 9, e.g., computers, interactive touch screen terminals, etc.} for use with interactive display cases for museums and interactive display windows for museums; interactive computer systems, namely, software for informative interaction between museum objects and visitors; electronic indicator panels

Class 20: Exhibitors, namely, {indicate specific goods in Class 20, e.g., display cases for museum exhibits, free-standing panel units for exhibitions, displays and partitioning, etc.} ~~(terms considered too vague by the International Bureau - rule 13 (2) (b) of the Common Regulations)~~; display cases; interactive museum display cases; interactive museum display windows in the nature of {specify type of goods in Class 20, e.g., display stands, display cases, etc.}

Class 38: Providing virtual structures in the nature of on-line facilities for real-time interaction between computer users concerning topics of {specify topics, e.g., art, culture, museums, etc.} ~~(terms considered too vague by the International Bureau - rule 13 (2) (b) of the Common Regulations)~~; interactive transmission and communication services, namely, {specify a service in Class 38, e.g., providing electronic transmission of information stored in a database via interactively communicating computer systems}

Class 41: Educational and entertainment services, namely, providing cultural information relating to {specify, e.g., art, history, diverse human cultures, beliefs, and lifestyles, etc.} ~~services~~ through interactive information systems; museum services

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications 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); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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. See TMEP §1402.04.

TRADEMARK COUNSEL SUGGESTED

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.

Please note that foreign attorneys, other than authorized Canadian 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. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).

RESPONSE GUIDELINES

FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods and services in International Classes 9, 20, 38, and 41 identified above, in the beginning of this Office action, will be deleted from the application.

In such case, the application will then proceed only with the following goods and services in International Classes 9, 20, and 41:

Class 9: Interactive computer systems, namely, software for informative interaction between museum objects and visitors; electronic indicator panels

Class 20: Display cases; interactive museum display cases;

Class 41: Museum services

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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 U.S. commonwealths or U.S. territories. 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.

/Galina Gurok/

Examining Attorney

Law Office 126

(571) 270-3589

galina.gurok@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.