Offc Action Outgoing

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:

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).

CLASSIFICATION OF SERVICES

Applicant has classified “installation, maintenance and repair services… for software for operating, controlling, managing, and configuring telecommunications and data processing equipment and systems” in International Class 37; however, the proper classification for installing, maintaining and repairing all computer software is International Class 42. Only the installation, maintenance or repair of tangible hardware such as telecommunications electronic equipment and telecommunications data processing equipment is properly classified in Class 37. Therefore, applicant must either (1) add International Class 42 to the application and reclassify the installation, maintenance and repair of software services in the proper international class, or (2) delete the wording “and for software for operating, controlling, managing, and configuring telecommunications and data processing equipment and systems” from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Applicant may adopt the following form of identification, if accurate:

CLASS 37 - Installation, maintenance, and repair services for telecommunications electronic equipment and for telecommunications data processing equipment;

CLASS 42 – Installation, maintenance and repair services of software for operating, controlling, managing, and configuring telecommunications and data processing equipment and systems.

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.

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

MULTI-CLASS APPLICATION REQUIREMENTS

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

(1) LIST SERVICES BY INTERNATIONAL CLASS: Applicant must list the services by international class.

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of services, applicant must also submit the following:

(a) DATES OF USE: 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) SPECIMEN: One specimen showing the mark in use in commerce for each international class of services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. 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 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.

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

(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. 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), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of services, the specimen(s) of record ARE ACCEPTABLE for both classes identified above. No new or additional specimens would be necessary.

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. §2.191; 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.

PARTIAL ABANDONMENT ADVISORY

If applicant does not respond to this Office action within the six-month period for response, the following wording in International Class 37 will be deleted from the application: “and for software for operating, controlling, managing, and configuring telecommunications and data processing equipment and systems”. The application will then proceed with the following goods and/or services in International Class(es) 37 only: See 37 C.F.R. §2.65(a); TMEP §718.02(a).

CLASS 37 - Installation, maintenance, and repair services for telecommunications electronic equipment and for telecommunications data processing equipment.

If applicant does not want to add another class to the application and limit this to one of the above suggested classes, applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

Alternatively, applicant may expedite prosecution of the application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

/jeffreyjlook/

Jeffrey J Look

Law Office 108

(571) 272-1652

jeffey.look@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.