Serial No: 78155.
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`From:
`To:
`CC:
`Subject:
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`Date:
`Attachments:
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`laperle@apple.com
`Ecoml l6@uspto. gov
`laperle@app1e.com
`RESPONSE (FEE) AND AMENDMENT- TRADEMARK
`APPLICATION NO. 78155188 — "Apple Logo" in Class 35
`4/1/03 3:28:22 PM
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`AIVIENDMENT AND RESPONSE TO FEBRUARY 3, 2003 OFFICE ACTION
`FROM LAW OFFICE 116
`VIA EMAIL ONLY
`
`BOX RESPONSES
`FEE
`
`Mark: DESIGN ONLY ("APPLE LOGO" SOLID)
`Applicant: Apple Computer, Inc.
`Serial Number: 78/155188
`Trademark Law Office: l 16
`
`Examining Attorney: Nora Buchanan Will
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`CERTIFICATE OF TRANSMISSION
`
`—
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`I hereby certify that this correspondence is being transmitted by electronic
`mail to the United States Patent and Trademark Office on the date shown
`below.
`I
`
`By: Thomas R. La Perle
`Title: Intellectual Property Counsel
`Dated: April 1, 2003
`Signature: /Thomas R. La Perle/
`
`AMENDMENT AND RESPONSE TO FEBRUARY 3; 2003 OFFICE ACTION
`FROM LAW OFFICE 116
`
`Dear Sir,
`
`This is in response to a February 3, 2003 Office Action regarding
`the above noted application. The Office Action was sent via email and has
`been copied below for ease of reference.
`’
`
`In that Office Action, the Examining Attorney I) noted that Applicant's
`substitute drawing filed on September 10;" 2002 is acceptable; 2) noted the
`Office records revealed no similar registered or pending marks which would
`bar registration under Trademark Act Section2(d); 3) requested Applicant
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`Serial No: 78155.
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`amend and rewrite the identification of services; and 4) noted Applicant's
`dual filing basis and inquires whether Applicant whishes to maintain its
`44(e) basis in addition to its l(b) basis.
`A
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`IDENTIFICATION OF SERVICES: A1\/[ENDMENT
`
`The Examining Attorney has found that the recitation of services is
`unacceptable as indefinite, and has requested Applicant amend the
`identification. Applicant will address the issues in the order raised by
`the Examining Attorney:
`
`1. "Analysis and consultation in the field of business information
`management"
`
`The Examining Attorney has requested Applicant indicate the specific subject
`matter of the above noted services. Applicant would like to adopt the
`following more specific language: "Analysis and consultation in the field of
`business information management, namely, the selection, adoption and
`operation of computers and computer information management systems."
`
`2, "Commercial information services provided by access to a computer
`database"
`
`The Examining Attorney has requested Applicant amend to "commercial
`information agency services provided by access to a computer database" or
`otherwise more clearly explain the nature of the services. Applicant thanks
`the Examining Attorney for her suggestion, but would like to amend the
`language to the following language: "providing information in the fields of
`business and commerce over computer networks and global communication
`networks."
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` 4
`3. "Computerized data storage services" and "data storage relating try
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`business"
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`I
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`E
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`/
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`The Examining Attorney believes the above noted services belong in Class 39.
`Applicant would like to keep this language and therefore would like to add
`Class 39 to the Application. Applicant understands there is an additional
`fee for this process and requests that the Office deduct the additional fees
`from Applicant's Deposit Account O1-2150.
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`4. "Retrieval Services"
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`The Examining Attorney found "Retrieval Services" in Applicant's
`identification "computerized data storage and_retrieval services" to be
`indefinite. Applicant would like to delete the term "retrieval services"
`from the Application.
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`Serial No: 781551.
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`5. "On-line business information services"
`
`The Examining Attorney requests that Applicant indicate the matter of the
`above services. Applicant would like to amend the above language to
`"business services, namely, providing computer databases regarding the
`purchase and sale of a wide variety of products and services of others;
`, business services, namely, dissemination of advertisingvfor others via
`computer networks and global communication networks;"
`
`6. "Retail services of a computer hardware, software and consumer
`electronic store"
`
`The Examining Attorney has requested that Applicant must clarify this
`wording to make the nature of theservices more clear. Applicant would like
`to adopt the following more specific language: "retail store services
`featuring computers, computer software, computer peripherals and consumer
`electronics, and demonstration of products relating thereto; online retail
`store services provided via computer networks and global communication
`networks featuring computers, computer software, computer peripherals and
`consumer electronics, and demonstration of products relating thereto."
`
`Given the above noted amendments, Applicant believes the Application should
`now cover the following services in Classes 35 and 39: ’
`
`CLASS 35
`
`"Analysis and consultation in the field of business information management,
`namely, the selection, adoption and operationof computers and computer
`information management systems; providing information in the fields of
`business and commerce over computer networks and global communication
`networks; business services, namely, providing computer databases regarding
`the purchase and sale of a wide Variety of products and services of others;
`business services, namely, dissemination of advertising for others via
`computer networks and global communication networks; retail store services
`featuring computers, computer software, computer peripherals and consumer
`electronics, and demonstration of products relating thereto; online retail
`store services provided via computer networks and/global communication
`networks featuring computers, computer software, computer peripherals and
`consumer electronics, and demonstration of products relating thereto."
`
`CLASS 39
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`"Computerized data storage services; data’ storage relating to business{”\;
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`DUAL FILING BASIS
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`Serial No: 78155.
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`At this time, Applicant whishes to maintain 44(e) as an additional basis for
`registration. Applicant will submit a true copy of the foreign registration
`as soon as Applicant receives said registration.
`
`CONCLUSION
`
`Applicant has addressed all the issues presented in the February 3, 2003
`Office Action. If the Examining Attorney has any questions, and if a
`telephone conversation can speed the application to registration, Applicant
`invites the Examining Attorney to contact Applicant at the below phone
`number.
`
`Respectfully submitted,
`
`/Thomas R. La Perle/I
`
`Thomas R. La Perle
`
`Intellectual. Property Counsel
`
`Apple Computer, Inc.
`1 Infinite Loop, MS: 3TM
`Cupertino, California 95014
`Phone: 408-974-2385
`Fax: 408-253-0186
`
`‘
`> From: Ecom116@uspto.gov
`> Date: Mon, 03 Feb 2003 20:39:02 -0500
`
`> To: laperle@apple.com
`> Subject: TRADEMARK APPLICATION NO. 78155188 - N/A
`>
`.
`> UNITED STATES PATENT AND TRADEMARK OFFICE
`>
`.
`
`SERIAL NO: 78/155188
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`APPLICANT: Apple Computer, Inc.
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`> >
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`> >
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`>
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`CORRESPONDENT ADDRESS:
`> Thomas R. La Perle
`
`

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`Serial No: 78155.
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`Page 5 of 9
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`V
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`> Apple Computer, Inc.
`> 1 Infinite Loop MS: 3TM
`> Cupertino CA 95014
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`> >
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`RETURN ADDRESS:
`> Commissioner for Trademarks
`
`> 2900 Crystal Drive
`> Arlington, VA 22202-3513
`> ecoml 16@uspto. gov
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`OFFICE ACTION
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`> > > > >
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`> > >
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`TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO
`THIS OFFICE
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`> ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.
`>
`.
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`Serial Number 78/155188
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`> >
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`The assigned examining attorney has reviewed the referenced application and
`> determined the following.
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`> > > > >
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`> > > > >
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`> >
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`MARK:
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`CORRESPONDENT'S REFERENCE/DOCKET NO: N/A
`
`CORRESPONDENT EMAIL ADDRESS:
`> laper1e@app1e.com
`> Please provide in all correspondence:
`>
`
`.
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`> 1. Filing date, serial number, mark and
`> applicant's name.
`> 2. Date of this Office Action.
`
`> 3. Examining Attorney's name and
`> Law Office number.
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`> 4. Your telephone number and e—mail address.
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`

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`Serial No: 781551.
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`Applicant's substitute drawing filed on September 10, 2002 is acceptable.
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`> >
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`> >
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`The applicant has filed asserting a bona fide intention to use the mark in
`> commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming
`> priority under Section 44(d), 15 U.S.C. §l126(d), based on a foreign
`> application. Under these circumstances, the applicant may rely solely on
`> its intent to use the mark in commerce as the basis for registration and not
`> the expected foreign registration, and still claim the benefit of the
`> priority filing date. If the applicant chooses to do so, this Office will
`> approve the case for publication without waiting for the applicant to submit
`> the foreign registration. Of course, the application must be in condition
`> for publication in all other respects. Moreover, while the application may
`> be approved for publication, the mark will not be registered until an
`> acceptable allegation of use has been filed.
`
`> >
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`If the applicant wishes to proceed relying on the applicant's intent to use
`> the mark in commerce as the sole basis for registration, with the claim of
`> priority, the applicant should so advise the examining attorney. TMEP
`> §§806.02(t) and 806.04(b).
`
`> >
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`If the applicant does not so indicate, this Office will presume that the
`> applicant wishes to rely on the foreign registration as an additional basis
`> for registration and will expect the applicant to submit a true copy, a
`> photocopy, a certification, or a certified copy of the foreign registration
`> and, if appropriate, an English translation. It is customary for the
`> translator to sign the translation. TMEP §§ 1004.01 and 100401 (b).
`
`> >
`
`The recitation of services is unacceptable as indefinite, as indicated
`> below. The applicant may amend to adopt any of the suggested recitations
`> which are accurate, however, if applicant adopts wording in more than class
`> applicant must reclassify the services accordingly and follow the procedures
`> contained herein for adding classes to the application. TMEP §1402.11.
`>
`.
`
`> "Analysis and consultation in the field of business information management"
`> - indicate specific subject matter
`’
`
`"Commercial information services provided by access to a computer database"
`> - Amend to "commercial information agency services provided by access to a
`> computer database" or otherwise more clearly explain the nature of the
`> services.
`'
`>
`.
`
`> "Computerized data storage services“ and "data storage relating to business"
`> - services belong in class 39, whereas the remaining services belong in
`> class 35.
`>
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`> >
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`

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`Serial No: 781551.,
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`> "Retrieval services" is indefinite - "public document retrieval services" is
`> an acceptable recitation of services in class 42.
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`> >
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`"On-line business information services" — indicate subject matter of the A
`> services.
`
`> >
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`"Retail services of a computer hardware, software and consumer electronic
`> store" - Applicant must clarify this wording to make the nature of the
`> services more clear. Applicant may amend to the following, if accurate:
`> "retail store services featuring computer hardware, computer software and
`> consumer electronics"
`
`> >
`
`For further assistance regarding an acceptable listing of goods and/or
`> services, please see the on-line searchable Manual of Acceptable
`> Identifications of Goods and Services, at
`> <http://www.uspto.gov/web/offices/tac/doc/gsmanual/>
`> http://www.uspto.gov/web/offices/tac/doc/gsmanual/BM_Hlt496082188.
`>
`.
`
`> Please note that, while an application may be amended to clarify or limit
`> the identification, additions to the identification are not permitted. 37
`> C.F.R. §2.71(a), TMEP §1402.06. Therefore, the applicant may not amend to
`> include any services that are not withinythe scope of the services recited
`> in the present identification.
`>
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`.
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`> The application identifies services that may be classified in several
`> international classes. Therefore, the applicant must either: (1) restrict
`> the application to the number of class(es) covered by the fee already paid,
`> or (2) pay the required fee for each additional class(es). 37 C.F.R.
`> §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
`>
`.
`
`> Effective January 1, 2003, the fee for filing a trademark application is
`> $335 for each class. This applies to classes added to pending applications
`> as well as to new applications filed on or after that date. 37 C.F.R.
`> §2.6(a)(l).
`
`If the applicant prosecutes this application as a combined, or
`> multiple-class, application, the applicant must comply with each of the
`> following.
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`> >
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`(1) The applicant must list the goods/services by international class with
`> the classes listed in ascending numerical order. TMEP §l403.01.
`>
`.
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`> (2) The applicant must submit a filing fee for each international class of
`> goods/services not covered by the fee already paid. 37 CFR. §§2.6(a)(1)
`> and 2.86(a); TMEP §§8l0.0l and 1403.01. Effective January 1, 2003, the fee
`> for filing a trademark application is $335 for each class. This applies to
`
`> >
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`

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`> classes added to pending applications aswell as to new applications filed
`> on or after that date.
`
`> >
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`The examining attorney has searched the Office records and has foundno
`> similar registered or pending mark which would bar registration under
`> Trademark Act Section 2(d), 15 U.S.C.' §l052(d). TMEP §704.02.
`
`> >
`
`If the applicant has any questions or needs assistance in responding to this
`> Office action, please telephone the assigned examining attorney.
`
`/Nora Buchanan Will/
`
`> > >
`
`> Trademark Attorney, Law Office 116
`"
`> ph 703—306-7915/ fax 703-746-8816
`> Respond at: http//www.uspto.gov/teas/index
`
`> > > >
`
`> >
`
`How to respond to this Office Action:
`
`To respond formally using the Office's Trademark Electronic Application
`> System (TEAS), visit http://wvvw.uspto.gov/teas/indexhtml
`> <http://www.uspto.gov/teas/index.htm1> and follow the instructions.
`>
`'
`'
`'
`
`> To respond formally via E-mail, Visit
`> http ://www.uspto.gov/web/trademarks/tmelecresp.htm
`> <http://www.uspto.gov/web/trademarks/tmelecresp.htm> and follow the
`> instructions.
`>
`
`,
`
`> To respond formally via regular mail, your response should be sent to the
`> mailing Return Address listed above and include the serial number," law
`> office and examining attorney's name on the upper right corner of each page
`> of your response.
`'
`
`> >
`
`To check the status of your application at any time, visit the Office's
`> Trademark Applications and Registrations Retrieval (TARR) system at
`> http://tarr.uspto.gov/ <http ://tarr.uspto. gov/>
`'
`
`> >
`
`For general and other useful information about trademarks, you are
`> encouraged to Visit the Office's web site at _
`> http://wwwuspto. gov/main/trademarks.htm
`> <http://www.uspto.goV/main/trademarks.htm>
`>
`.
`
`> FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE
`CONTACT THE
`v
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`> ASSIGNED EXAMININGATTORNEY.
`>