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: 3/10/2011

 

 

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 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).

 

However, the applicant should note the following informalities:

 

Identification of Goods

 

The wording used to describe the goods is indefinite and must be clarified because “computer software for accessing, browsing, sharing, and communicating over computer networks and secure private networks” is overly broad and could refer to several types of software for which the applicant does not seek protection.  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate: 

 

mobile phones; computer software used to create visualizations of multi-dimensional designs in the fields of architecture, engineering, interior design, landscaping, game development and graphic arts; computer software for accessing browsing over computer networks and secure private networks, also known as, communication software for providing access to the Internet; computer software for sharing of data  and information over computer networks and secure private networks; computer software for communicating over computer networks and secure private networks, also known as, [specify the actual software contemplated, e.g., voice-over Internet protocol (VOIP) software, software for instant messaging, software for reading and sending emails, etc.]; computer software for use in connecting to and searching the contents of remote computers, computer networks, and secure private networks; computer software for running web applications; computer search engine software; computer storage devices, namely, blank flash drives; computer mice and electric adapters, in International Class 9.

 

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

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified because it refers to several Classes of services for the protection of which the applicant has not submitted sufficient fees.  See TMEP §1402.01.  Of particular note, “search engines” allow users to “search” for information. If the applicant also seeks to protect services focused on “ordering and downloading books” the applicant must understand that these are separate services and that the references thereto must be clear. Applicant may adopt the following identification, if accurate: 

 

Computerized on-line retail store services in the field of software applications for use on computers, mobile phones, and other electronic devices; computerized on-line ordering services in the field of books, in International Class 35.

 

Providing discussion groups and blogs for software developers, in International Class 38.

 

Providing a web site that enables users to store health and medical information, in International Class 39.

 

application service provided (ASP), namely, hosting computer software applications of others; computer services, namely, providing search engines to allow users to find blogs on a wide variety of topics; computer services, namely, providing a search engine to allow users to preview, order and download books, search full texts of books, find reviews and other information on books, search for magazine content, and find references books on other wide sites; provision of customized search engines for others; providing technical information in the field of computer software development; providing a web site featuring software development tools, API's (application program interface) and technical resources, specifically [specify the “technical resources” contemplated by their common commercial names so that it is clear the service falls within the scope of Class 42, or so that the service may be properly classified]; providing a web site that enables users to, organize, track, monitor, and share health and medical information, in International Class 42.

 

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods and services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

(a)        Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)        One specimen showing the mark in use in commerce for each class of goods and/or services.  The specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.;

 

(c)        The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)        Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above for a specimen for each class of goods and/or services, please note that the specimen(s) of record is acceptable for International Classes 9 only.  Applicant must submit additional specimens if other classes are added to the application.

 

Contact and Status Update Information

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The applicant may view and download any or all documents contained in the electronic file wrapper of its OWN and all other pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at:

 

http://tmportal.gov.uspto.report/external/portal/tow. 

 

Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.

 

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

 

 

/Ronald E. Aikens/

Trademark Attorney

US Patent and Trademark Office

Ron.Aikens@USPTO.gov

(571) 272-9268 (d)

(571) 273-9268 (f)

 

 

 

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.  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.

 

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

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 3/10/2011 FOR

SERIAL NO. 85222261

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

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

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 3/10/2011 (or sooner if specified in the office action).

 

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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

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