From:
`
`To:
`
`CC:
`
`Subject:
`
`laperle@apple.com (laperle@apple.com)
`
`Ecom116@uspto.gov (SMTP:Ecom116@uspto.gov)
`
`laperle@apple.com (SMTP:laperle@apple.com)
`
`AMENDMENT AND RESPONSE FOR TRADEMARK APPLICATION NO. 78157042 - "Apple Logo"
`(Black) in International Class 38
`
`Received:
`
`4/9/03 1:49:20 PM
`
`Attachments:
`
`AMENDMENT AND RESPONSE TO APRIL 9, 2003 OFFICE ACTION
`FROM LAW OFFICE 116
`
`VIA EMAIL ONLY
`
`Mark: DESIGN ONLY ("APPLE LOGO" SOLID)
`Applicant: Apple Computer, Inc.
`Serial Number: 78/157,042
`Filing Date: August 22, 2002
`Trademark Law Office: 116
`Examining Attorney: Michele-Lynn Swain
`
`Correspondent's Reference/Docket Number: TM 7410
`
`CERTIFICATE OF TRANSMISSION
`I hereby certify that this correspondence is being transmitted by electronic
`mail to the United States Patent and Trademark Office on April 9, 2003.
`
`By: Thomas R. La Perle
`Title: Intellectual Property Counsel
`Dated: April 8, 2003
`Signature: /Thomas R. La Perle/
`
`AMENDMENT AND RESPONSE TO APRIL 9, 2003 OFFICE ACTION
`FROM LAW OFFICE 116
`
`Dear Madam,
`
`This is in response to a April 9, 2003 Office Action regarding the above
`noted application. In that Office Action, the Examining Attorney requested
`Applicant amend the identification of services because it does not include
`the subject matter or field of the claimed bulletin board services.
`Applicant responds to the Examining Attorney's request herein.
`
`RECITATION OF SERVICES: AMENDMENT
`
`As noted above, the Examining Attorney requested Applicant amend the
`identification of services because it does not include the subject matter or
`field of the claimed bulletin board services.
`
`Applicant would like to amend the particular bulletin board services
`identification to read "providing on-line electronic bulletin boards for
`transmission of messages among computer users in the fields of business,
`creative design, education, computers, information technology, word
`processing, database management, multimedia, entertainment, electronic
`commerce and telecommunications."
`
`

`
`Applicant would now like the identification of services to read in its
`entirely as follows:
`
`"Telecommunication services, namely, electronic transmission of data and
`images via computer networks; telex and telephone services; telegram
`transmission; rental of telecommunication equipment in general; electronic
`mail services; providing on-line electronic bulletin boards for transmission
`of messages among computer users in the fields of business, creative design,
`education, computers, information technology, word processing, database
`management, entertainment, electronic commerce and
`telecommunications; telecommunications consultation; facsimile transmission;
`delivery of messages by electronic transmission; electronic transmission of
`data and information by computer, cable, radio, teleprinter, teleletter,
`electronic mail, telecopier, television, cellular, microwave, laser beam,
`and satellite; radio, television and Internet broadcasting; providing
`Internet access; Telecommunications gateway services, namely providing a
`gateway for connecting independent telecommunication and computer networks"
`in Class 38.
`
`CONCLUSION
`
`Applicant believes it has addressed all the issues presented in the April 9,
`2003 Office Action. Applicant believes the application is now in condition
`for publication, and action toward that end at an early date is earnestly
`solicited. 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/
`__________________________________
`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: Wed, 09 Apr 2003 13:23:55 -0400
`> To: laperle@apple.com
`> Subject: TRADEMARK APPLICATION NO. 78157042 - N/A
`
`>>
`
`>>>
`
`>>
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` SERIAL NO: 78/157042
`
` APPLICANT: Apple Computer, Inc.
`
`>>>>>>
`
` CORRESPONDENT ADDRESS:
`> Thomas R. La Perle
`> Apple Computer, Inc.
`
`

`
`> 1 Infinite Loop MS: 3TM
`> Cupertino CA 95014
`
`>>
`
` RETURN ADDRESS:
`> Commissioner for Trademarks
`> 2900 Crystal Drive
`> Arlington, VA 22202-3513
`> ecom116@uspto.gov
`
`>>>>>
`
`>>>>>
`
` MARK:
`
` CORRESPONDENT'S REFERENCE/DOCKET NO: N/A
`
`>>
`
` CORRESPONDENT EMAIL ADDRESS:
`> laperle@apple.com
`> Please provide in all correspondence:
`
`>>
`
` 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.
`> 4. Your telephone number and e-mail address.
`
`>>>>>
`
` OFFICE ACTION
`
`>>>
`
` TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE
`> ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.
`
`>>>
`
` Serial Number 78/157042
`
`>>
`
` This letter responds to the applicant's communication filed on February 28,
`> 2003. The following requirement is continued and made final.
`
`>>>
`
` Recitation of Services
`
`>>
`
` The amended recitation of services is unacceptable as indefinite because it
`> does not indicate the subject matter or field of the bulletin boards. The
`> applicant should adopt the following recitation of services, if accurate:
`
`>>
`
` Telecommunication services, namely, electronic transmission of data and
`> images via computer networks; telex and telephone services; telegram
`> transmission; rental of telecommunication equipment in general; electronic
`> mail services; providing on-line electronic bulletin boards for transmission
`> of messages among computer users [indicate subject matter or field]
`> telecommunications consultation; facsimile transmission; delivery of
`> messages by electronic transmission; electronic transmission of data and
`> information by computer, cable, radio, teleprinter, teleletter, electronic
`> mail, telecopier, television, cellular, microwave, laser beam, and
`
`

`
`> satellite; radio, television and Internet broadcasting; providing Internet
`> access; Telecommunications gateway services, namely providing a gateway for
`> connecting independent telecommunication and computer networks" in Class 38.
`> TMEP section 1301.05.
`
`>>
`
` 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. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may
`> not amend to include any services that are not within the scope of the
`> services recited in the present identification.
`
`>>
`
` To ensure the services are identified and classified properly, the applicant
`> may wish to consult the Acceptable Identification of Goods and Services
`> Manual located at http://atlas.uspto.gov/netahtml/tidm.html
`> <http://atlas.uspto.gov/netahtml/tidm.html> . The applicant should use the
`> listings located in this database exactly as worded as possible. However,
`> use of parenthesis within the identification is unacceptable as indefinite.
`
`>>
`
` The requirement for clarification of the identification of goods is
`> continued and made FINAL.
`
`>>
`
` Options
`
`>>
`
` Please note that the only appropriate responses to a final action are either
`> (1) compliance with the outstanding requirements, if feasible, or (2) filing
`> of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section
`> 2.64(a). If the applicant fails to respond within six months of the mailing
`> date of this refusal, this Office will declare the application abandoned.
`> 37 C.F.R. Section 2.65(a).
`
`>>>>
`
` /Michele-Lynn Swain/
`> Examining Attorney, LO 116
`> PH(703) 306-7926
`> FX(703) 746-8116
`
`>>>
`
` How to respond to this Office Action:
`
`>>
`
` To respond formally using the Office's Trademark Electronic Application
`> System (TEAS), visit http://www.uspto.gov/teas/index.html
`> <http://www.uspto.gov/teas/index.html> 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://www.uspto.gov/main/trademarks.htm
`
`

`
`> <http://www.uspto.gov/main/trademarks.htm>
`
`>>
`
` FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE
`> ASSIGNED EXAMINING ATTORNEY.
`>