| To: | The Trustees of the University of Pennsy ETC. (trademarks@schnader.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 85520381 - UPENN - 0897450-0705 |
| Sent: | 5/10/2012 12:57:02 PM |
| Sent As: | ECOM101@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85520381
MARK: UPENN
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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: The Trustees of the University of Pennsy 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: 5/10/2012
This responds to applicant’s communication dated April 5, 2012, wherein applicant 1) deleted its extraneous Sec. 2(f) claim and 2) amended its identification of services. Nos. 1 is acceptable and has been entered into the application record. For the reasons set forth below, the requirement for an acceptable identification of services is continued:
Applicant has amended its identification as follows:
“Educational services; namely, providing courses of instruction at the undergraduate, graduate, and post graduate levels; educational services, namely, providing continuing professional education in the fields of the liberal arts and sciences, nursing, social policy, business, English and foreign languages,” in Class 41.
In addition, the placement of a semicolon after the first instance of “educational services” is ambiguous to the extent the punctuation enables the wording to be read independently. In order to ensure proper interpretation of the following clarifying language, the semicolon should be replaced by a comma. Since this punctuation appeared in language proposed in the initial Office action, this further action is issued as non-final. The examining attorney apologizes for any confusion in this regard.
Applicant may substitute the following proposed wording, if accurate:
“Educational services, namely, providing courses of instruction at the undergraduate, graduate, and post graduate levels; educational services, namely, providing continuing professional education courses in the fields of the liberal arts and sciences, nursing, social policy, business, English and foreign languages,” in Class 41.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
For assistance with identifying 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.
Advisory: Combined Application
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
The filing fee for adding classes to an application is as follows:
$325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
$375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@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.