Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 8/25/2010

 

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

 

A complete search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred until applicant responds to the issues raised in this Office action [specifically the translation requirement].  TMEP §704.02.

 

TRANSLATION

 

Applicant must submit an English translation of the mark.  37 C.F.R. §2.32(a)(9); TMEP §809.  The following translation statement is suggested:  “The English translation of TAOBAO is _____[indicate English translation].”  See TMEP §809.03.

 

DUAL BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)        If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify.  In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004.  A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should respond to this Office action requesting suspension pending receipt of the foreign registration documentation.  TMEP §1003.04(b).; or

 

(2)        If applicant intends to rely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis.  See TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

In the class 9 identification, the wording “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers” is wording the  includes the headings of the international classes.  These headings are meant to indicate the subject matter and general scope of each international class of goods and services.  While such broad designations may be sufficient under the trademark laws and practice of other countries, the Office considers them too broad to identify goods or services in a U.S. application.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986); see TMEP §§1401.08, 1402.01 et seq.  Therefore, applicant must amend the goods to specify the common commercial or generic name for each product.  

 

 

The applicant may adopt the following in class 9, if accurate:  Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments namely (applicant must indicate the specific goods being offered using common commercial terms); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity namely (applicant must indicate the specific goods being offered using common commercial terms); apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers and recording discs (applicant must indicate if the goods are blank or prerecorded and if they are prerecorded, the subject matter, i.e. music, self improvement, instruction in mathematics); automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer programs (amend to indicate function of programs and field, if field specific); software for processing electronic payments to and from others; authentication software (indicate function; computer software supplied on the Internet (amend to indicate function of programs and field, if field specific); on-line electronic publications (downloadable from the Internet or a computer network or a computer database) (amend to delete parentheses and state common commercial name of publications as well as the field of use, i.e. online electronic newsletters in the field of math); computer software (amend to indicate function of software and field, if field specific); computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal media players namely (applicant must indicate the specific goods being offered using common commercial terms, i.e. MP3 players); mobile telephones; smart phones; digital cameras; computer workstations comprised of (applicant must indicate the specific hardware components of the workstations, i.e. computers and servers); servers namely (applicant must indicate the specific goods being offered using common commercial terms, i.e. computer servers); computer and telecommunications networking computer hardware; computer network adaptors, switches, routers and hubs; wireless and wired modems and communication cards and devices namely (applicant must indicate the specific goods being offered using common commercial terms); laptop holders in the nature of (applicant must indicate the specific goods being offered using common commercial terms, i.e. protective sleeves and carrying cases), computer bags; fire-extinguishing apparatus; computer hardware and firmware for use in (applicant must clearly indicate the function of the software and firmware and if the goods are field specific, the field of use); computer software and downloadable software for use in (applicant must clearly indicate the function of the software and firmware and if the goods are field specific, the field of use); compact discs (applicant must indicate if the goods are blank or prerecorded and if they are prerecorded, the subject matter, i.e. music, self improvement, instruction in mathematics); digital music downloadable from the Internet; telecommunications apparatus namely (applicant must indicate the specific goods being offered using common commercial terms); mouse pads; mobile phone handsets; mobile phone accessories namely (applicant must indicate the specific goods being offered using common commercial terms); downloadable games, pictures, motion pictures, movies and music via the Internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units; television broadcasting equipment, namely (state common commercial names of equipment); cameras; video cameras; headphones; ear pieces; speakers; Global Positioning System (GPS) apparatus and equipment; computer, electronic and video games programs and software including software downloadable from the Internet; liquid crystal displays for telecommunications and electronic equipment; set top box; remote control for (indicate item, i.e. video games); data storage programs (clarify to common commercial name, for example; computer software used for the storage of data on hard discs, compact discs, tapes, optical discs; spectacles and sunglasses; signboards; encoded or magnetic bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers.

 

As to the class 16 identification, the wording “newspapers; magazines; periodicals; journals; paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks” includes the headings of the international class.  These headings are meant to indicate the subject matter and general scope of each international class of goods.  While such broad designations may be sufficient under the trademark laws and practice of other countries, the Office considers them too broad to identify goods in a U.S. application.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986); see TMEP §§1401.08, 1402.01 et seq.  Therefore, applicant must amend the goods to specify the common commercial or generic name for each product. 

The applicant may adopt the following, if accurate: Newspapers; magazines featuring _____ [specify subject matter, e.g., travel]; printed periodicals in the field of ______ [specify subject matter]; journals concerning ______ [specify subject matter]; paper and cardboard, and goods made from these materials, namely, bookbinding materials; printed matter, namely, photographs; stationery; adhesives for stationery or household purposes; artists’ materials, namely, paint brushes; typewriters and office requisites, except furniture, namely, ______ [specify items, e.g., correcting fluid for type]; printed instructional and teaching material, except apparatus, in the field of _______ [specify field of use, e.g., science]; plastic materials for packaging, namely, ______ [specify items, e.g., plastic bags for packaging]; printers’ type; printing blocks; books, namely, ______ [specify type, e.g., prayer books]; books and pamphlets in the field of ______ [specify subject matter, e.g., real estate sales]; posters; printed  cards, namely, ______ [specify type, e.g., printed recipe cards]; circulars in the field of ______ [specify subject matter]; catalogues in the field of ______ [specify subject matter]; calendars; price tags; paper price labels; general purpose bags of paper, cardboard and plastic; printed telephone, facsimile, electronic mail and web site directories; cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards; marketing and promotional materials (namely, indicate common commercial names); printed advertisements (amend to indicate common commercial names); printed user manuals; packaging materials (amend to indicate common commercial name and composition); facial tissues; handkerchiefs made of paper; models and figurines made of paper; paper party bags; paper party favors.

In class 35 the applicant may adopt the following, if accurate: Advertising; business management; business administration; providing office functions; advertising agency services; advertising services provided for others; database management; compilation of information into computer databases; market research and business consulting services; business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; dissemination of business information of goods and services of others via local and global computer networks; business consultancy services in the field of global computer web sites where third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business; providing computerized online ordering services in the field of (applicant must indicate the subject of the ordering services, i.e. clothing, jewelry or sporting goods); advertising of goods and services of others via local and global computer networks; international import and export agency services; rental of advertising space on communication media; online trading services relating to electronic auctioneering and providing online business evaluation relating thereto; online retail store services featuring consumer products in the field of (applicant must indicate the subject of the ordering services, i.e. clothing, jewelry or sporting goods); providing an online business directory of third party web sites to facilitate business transactions; business consultancy services in the field of operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance for others in the field of facilitating business transaction via local and global computer networks; corporate business management consultancy services; marketing and promotion services; publication of publicity materials; marketing services, namely providing videos to promote vacant premises; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; providing information concerning commercial sales, providing business information, providing a database of information pertaining to the promotional products industry; telephone answering service; auctioneering provided on the Internet; personnel management; provision of commercial sales, business information, advertising and commercial information through a global computer network and via the Internet; presentation of goods on communication media for retail purposes; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise Internet web site specializing in the marketing of the sale of goods and services of others; retail and wholesale store services featuring telephones, mobile phone handsets, mobile phone accessories, electronic and telecommunications goods, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, precious metals, jewellery, precious stones, printed matter, stationery and magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets, rugs, games and electronic toys, chemicals used in industry, science, photography and agriculture, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, lubricants, fuels, candles, pharmaceutical, veterinary and sanitary preparations, ironmongery and small items of metal hardware, machines and machine tools, cutlery, razors and hand tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, spectacles and sun glasses, surgical and medical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and chronometric instruments, musical instruments, magazine, cards, paper and cardboard products, picture, typewriters and office requisites, packaging materials, rubber and plastics for manufacture use, packing and insulating materials, leather and imitations of leather and goods made from these materials, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker's articles, bed and table covers, playthings and sporting articles. foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers' articles and matches; direct mail advertising; buying and selling agency services, namely arranging of buying and selling contracts for third parties; selection and procurement of goods, namely purchasing of (applicant must specify the goods or services, i.e. weapons, clothing, office furniture) for individuals and businesses; catalog and online ordering services featuring (applicant must indicate the specific field of goods, i.e. jewelry, clothing, cosmetics and furniture); department store services; supermarket services; secretarial services; providing statistical information; organization of exhibitions for commercial or advertising purposes; business services, namely preparing mailing lists; business investigation; business administration consultation services in the field of  processing of sales made on the Internet; business networking referral services and personnel placement; import-export agencies; subscriptions to newspapers; document reproduction; transcription services, namely conference call, message and stenographic transcription; rental of office equipment; customer relationship management; business management services relating to electronic commerce; business management and administration services relating to sponsorship programs; accounting services, consultancy, information and advisory services relating to the aforesaid services.

As to int. class 38, the applicant may adopt the following:  Telecommunications services namely (applicant must indicate the specific services being offered); provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunications services, namely the electronic transmission of data and documents; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to the world-wide web; communication by computer terminals; communication by fiber optic networks; electronic transmission of messages and images by computer; facsimile transmission; message sending; paging services; rental of modems; transmission of data by electronic means; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; transmission and delivery of data by electronic means; electronic transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by electronic, telephone, telegraph, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging services, telephone, video and web conferencing services and order-transmission services; video conferencing services; providing an electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters concerning (applicant must indicate the field or subject of the bulletin board); providing electronic bulletin boards and message boards for transmission of messages among users concerning (applicant must indicate the field or subject of the bulletin board); provision of discussion forums for transmission of messages among computer users concerning (applicant must indicate the field or subject of the forum); television broadcasting services; broadcasting and transmission of radio and television programs; music broadcasting; transmission of music, films, interactive programs, videos, electronic computer games via a global computer network or the internet; electronic transmission of information in the field of on-line shopping and general retail services; video-on-demand transmission services; news agency services, namely transmission of news items to news reporting organizations; providing access to computer databases on the global computer network; providing chat room services or transmission of messages among computer users concerning (applicant must indicate the field or subject of the chat room);  providing multiple user access to global computer information networks; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; communication services, namely, text and numeric wireless digital messaging services; transmission of information and data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chat rooms via text messaging namely (applicant must indicate the specific services being offered, ~ if applicant is providing chat rooms, applicant must indicate this for the record and clarify the subject matter of the chat room); providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning consumer products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services;  audio and video communication via computers and computer networks, and via a global communications network; providing computer access to online interactive bulletin boards and databases; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and notes feature, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; consultancy, information and advisory services relating to the aforesaid services.

 

In int. class 41 the applicant may adopt the following, if accurate:  Education namely (applicant must indicate the specific services being offered); providing of training  in the field of (applicant must indicate the subject matter of the training, i.e. horse training, physical fitness training or training in the nature of classes in the field of mathematics); entertainment namely (applicant must indicate the specific services being offered); sporting and cultural activities namely (applicant must indicate the specific services being offered, i.e. soccer tournaments); publication of texts, books and journals, other than publicity texts; publication of diagrams, images and photographs; publication of newspapers, magazines and periodicals; education namely training courses and instructional classes in the field of telecommunications hardware and software, operation of computers, computer programming, web site design, e-commerce, business management and advertising; provision of education, recreation, instruction, tuition and training both interactive and non-interactive namely (applicant must indicate the specific services being offered); design of educational courses and examinations namely (applicant must indicate the specific services being offered, i.e. developing curriculum for others in the field of ~ applicant must indicate the subject matter); entertainment provided via electronic and digital interactive media namely (applicant must indicate the specific services being offered, i.e. providing a continuing news and comedy show broadcast over television and the internet); electronic games services provided by means of the Internet namely (applicant must indicate the specific services being offered, i.e. providing an online computer game); provision of information about education, entertainment information, information in the field of sports and sporting events, and information in the field of recreation and leisure activities and cultural activities and exhibitions; providing on-line electronic publications  in the nature of (applicant must indicate the specific nature of the publication and the subject matter, i.e. magazines and newsletters in the field of sports); arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting musical concerts; arranging, organizing, hosting and conducting events and competitions for education or entertainment purposes in the nature of (applicant must indicate the type of events and competitions); arranging, organizing, hosting and conducting game shows and quests; entertainment ticket agency services; entertainment information and information about education, provided online from a computer database or the Internet; providing non-downloadable prerecorded digital music from the Internet; providing non-downloadable prerecorded digital music from MP3 Internet web sites; entertainment and education services namely (applicant must indicate the specific services being offered) relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services namely (applicant must indicate the specific services being offered); rental of sound recordings; preparation in the nature of (applicant must indicate the specific services being offered) of entertainment, educational, documentary and news programs for broadcasting; news reporters services; providing news  in the field of sporting or cultural events and current events reporting provided by satellite television, the Internet or radio; production of television and radio programs and film production; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose namely (applicant must indicate the specific services being offered); game services namely (applicant must indicate the specific services being offered); provision of recreation activity, sporting and gymnasium facilities; live performances by musical bands; night club services, discotheques, and fashion shows; club services relating to entertainment, education and cultural services namely (applicant must indicate the specific services being offered); arranging, conducting and provision of conferences, conventions,  seminars and training workshops namely (applicant must indicate the specific services being offered and the subject matter of the services); organizing and conducting exhibitions, fashion shows, educational shows and cultural shows and performances namely (applicant must indicate the subject matter of the shows and performances); art exhibitions; art services namely rental of artwork; training services in the field of occupational health and safety, and environmental conservation; provision of cigar classes, wine tasting classes; providing education information about research materials and agency thereof namely (applicant must indicate the specific services being offered); arranging, organizing, planning and running seminars in the field of (applicant must indicate the subject matter of the seminars); animal training; direction in producing broadcasting programs namely (applicant must indicate the specific services being offered); instructional services namely (applicant must indicate the specific services being offered, i.e. classes and seminars) in the field of the operation of audiovisual machines and equipment, which is used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies namely booking of seats for shows and sports events; rental of motion pictures; rental and leasing of musical instruments; rental and leasing of television sets; lending libraries; archive library services; subtitling services, namely preparing subtitles for movies; sign language interpretation services; rental of computer game software; providing online video games, computer games; providing online non-downloadable music and movies through the internet; providing online computer games and conducting contests; rental of pre-recorded video tapes; rental and leasing of game machines; rental of arcade game equipment; rental of motion pictures; photography; translation; language interpretation; educational and training programs in the field of risk management; educational and training programs relating to certification; provision of news in the nature of current event reporting; consultancy, information and advisory services relating to the aforesaid services; lottery services.

 

Lastly as to the class 42 services, the applicant may adopt the following, if accurate:  Scientific and technological services and research and design relating thereto in the field of (applicant must indicate the field, i.e. integrated system architecture that allows for the rapid development of interactive and customizable learning applications), industrial research services in the field of (applicant must indicate the field or the goods that are the subject of research); design and development of computer hardware and software; computer service relating to creating indexes of information, sites and resources on computer networks; providing search engines; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design for others in the field of personal digital assistants and personal media players; design for others in the field of mobile telephones and smart phones; design for others in the field of digital cameras; computer services namely (applicant must indicate the specific services being offered, i.e. computer diagnostic and forensic services); computer programming; computer system software services namely (applicant must indicate the specific services being offered, i.e. troubleshooting of computer software problems and software development services); providing direct connection services between computer users for exchanging data namely (applicant must indicate the specific services being offered, i.e. providing temporary use of online non-downloadable software for the exchange of data); computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software of others for use in searching and retrieving information from databases and computer networks; providing technical information at the specific request of end-users by means of telephone or global computer network; computer services relating to customized searching of computer databases and websites namely (applicant must indicate the specific services being offered); providing customized online web pages featuring user-defined information which includes online links to third party web sites; computer and electronic signal coding and decoding; conversion of physical data and documents into electronic media format; testing and evaluation services of ___(indicate what is being tested and evaluated); architectural and design services; interior designs of buildings, offices and apartments; computer security consultation services for computer and network information services; computer security information, knowledge, and testing services; quality certification services; certification services and preparation of reports therefor; authentication services in the field of _____i.e. stamps; computer security services, namely access control to computers, electronic networks and databases; security of data transmission and of transactions via computer networks; on-line authentication of electronic signatures; consultancy in the field of data security; consultancy, information and advisory services relating to the aforesaid services.

 

The applicant may wish to add int. class 45; computer security services, namely, the providing user authentication services for others to ensure the security of transmitted information; providing security risk management programs in the field of ___.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and 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 et seq.

 

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.

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

 

(1)        LIST GOODS/SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

ASSISTANCE

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 105

571-272-9136

Karen.Bush@uspto.gov

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 85032223) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 8/25/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=85032223&doc_type=OOA&mail_date=20100825 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 8/25/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.