UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 4/6/2009

 

 

Serial No. 77625434

 

This letter responds to applicant’s communication dated March 16, 2009.

 

In the initial Office action dated March 9, 2009, the examining attorney requested an amended identification of services.

 

Applicant, in its response of March 16, 2009, amended its identification of services.

 

Applicant originally came in for the following:  “Electronic processing of financial data for the purpose of facilitating replenishment of pre-paid wireless communications devices,” in Class 36.

 

In its response of March 16, 2009, applicant amended its identification of services to:  “electronic processing of financial data for the purpose of facilitating replenishment of wireless communications devices, namely, processing electronic payments made for the purpose of facilitating replenishment of wireless communications devices,” in Class 36.

 

Applicant should note the following new issue:

 

The proposed amendment to the identification cannot be accepted because the following wording refers to goods and/or services that are beyond the scope of the identification that was set forth in the original application  See 37 C.F.R. §2.71(a).  Specifically, applicant’s amendment of “pre-paid wireless communication devices” to “wireless communications devices” is unacceptable inasmuch as it goes beyond the scope of the original identification since wireless devices includes all types of wireless devices, and not just “pre-paid” wireless devices.

 

 

Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07(a).  Therefore, this wording should be deleted from the identification of goods and/or services.

 

In view thereof, applicant may amend the identification as follows:

 

“electronic processing of financial data for the purpose of facilitating replenishment of pre-paid wireless communications devices, namely, processing electronic payments made through pre-paid cards for the purpose of facilitating replenishment of pre-paid wireless communications devices,” in Class 36.

 

Scope Advisory

 

Identifications of services can be amended 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.  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 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.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Response

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

 

 

 

/efalk/

Erin Falk

U.S. Patent & Trademark Office

Trademark Examining Attorney

Law Office 101

(571) 272-1110

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please 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.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.