To: | SMOOTHSTONE IP COMMUNICATIONS CORPORATIO ETC. (sduvall@middreut.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85257447 - XS - ZM029-07005 |
Sent: | 6/2/2011 11:46:00 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85257447
MARK: XS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: SMOOTHSTONE IP COMMUNICATIONS CORPORATIO ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/2/2011
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.
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/Services
THIS REQUIREMENT APPLIES TO CLASS(ES) 9, 35, 37 AND 42 ONLY.
THIS REQUIREMENT APPLIES ONLY TO GOODS/SERVICES THE SPECIFIED THEREIN.
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.
Class 9
Class 35
Applicant must clarify the identification of services by properly classifying consulting services in the field of network security in Class 42. See TMEP §1402.01.
Class 37
Class 42
Applicant must clarify the identification of services by specifying the nature of the servicing of application software. See TMEP §1402.01.
Proposed Amendment of Identification of Goods/Services
Applicant may adopt the following identification of goods and services, if accurate:
Software for enabling Unified IP Communications across various networks, media and devices, in Class 9;
Business consulting services in the fields of telecommunications, Unified IP Communications, Voice over Internet-Protocol (VoIP), Wide Area Networking (WAN), and network management, in Class 35;
Installation, maintenance and repair of telecommunications and data networking hardware for providing Unified IP Communications services across multiple network infrastructures and communication protocols, in Class 37;
Unified IP Communications services that facilitate communications across various networks, media and devices, namely, communication via computer terminals, by digital transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; video, audio and data conferencing services, in Class 38;
Software as a Service (SaaS) provider featuring software for enabling unified communications across various networks, media and devices, namely, software for queuing, handling, logging, recording, monitoring, tracking, supervision, management and routing of telephone calls, facsimile transmissions, video, e-mails, and web based messages, and software for monitoring and management of computer and network systems for security and application optimization purposes; installation, maintenance and repair of application software for providing Unified IP Communications services across multiple network infrastructures and communication protocols; integration of telecommunications and data networking equipment and application software for providing Unified IP Communications services across multiple network infrastructures and communication protocols; computer services, namely, WAN design; application optimization services, namely, updating of computer network configurations; development of security systems and contingency planning for computer networks; providing temporary use of non-downloadable computer software for enabling Unified IP Communications across various networks, media and devices; computer security consultancy, in Class 42.
See TMEP §1402.01.
Specimen
THIS REQUIREMENT APPLIES TO CLASS(ES) 9 ONLY.
In this case, the specimen consists of promotional and marketing materials for applicant’s services.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See 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 actual sale or advertising of the services. See TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark for the identified goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
/Vivian Micznik First/
Vivian Micznik First
Trademark Attorney, Law Office 114
571-272-9159
vivian.first@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 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 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.