To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`SOLUTO LTD (docketing@mwzb.com)
`
`U.S. TRADEMARK APPLICATION NO. 85459170 - SOLUTO - FJW-0001-T
`
`8/27/2012 5:39:28 PM
`
`ECOM103@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`85459170
`
`*85459170*
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/trademarks/index.jsp
`
`      APPLICATION SERIAL NO.        
`     MARK: SOLUTO              
`     
`JEFFREY A. SMITH              
`MILLEN, WHITE, ZELANO & BRANIGAN, P.C.                  
`ARLINGTON, VA 22201-3360           
`       APPLICANT:         
`  SOLUTO LTD                   CORRESPONDENT’S REFERENCE/DOCKET NO :           
`   
`FJW-0001-T            CORRESPONDENT E-MAIL ADDRESS:           
`
`    CORRESPONDENT ADDRESS:
`         
`
`2200 CLARENDON BLVD STE 1400
`
`         
`
`docketing@mwzb.com
`
`ISSUE/MAILING DATE: 8/27/2012
`
`SUSPENSION NOTICE:  NO RESPONSE NEEDED
`
`The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et
`
`seq.  
`
`The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark
`examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP
`§§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.
`
`No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or
`Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi.
`
`FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign
`registration from applicant’s country of origin that will be in force at the time the United States registration issues.   15 U.S.C. §1126(e); 37
`C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s , 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP
`§§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or
`proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant
`must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark
`examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08,
`1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if
`applicable.  TMEP §§1003.08, 1004.01(a).
`
`REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:   The following refusal(s)/requirement(s) is/are continued and
`maintained:
`
`IDENTIFICATION OF GOODS/SERVICES
`
` 
` 
` 
` 
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` 
` 
`

`

`GENERAL GUIDELINES
`
`In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as
`possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,
`” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific
`goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).
`
`Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of
`indefinite words and phrases.  If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,”
`“and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the
`specific services identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).
`
`Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the
`
`scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.   
`
`UNACCEPTABLE IDENTIFICATION
`
`PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold.  If the recommended
`changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information
`
`into the amended description.  
`Class 009  
`
`Applicant filed the following identification:
`
`“Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; apparatus for
`recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank magnetic recordable discs, blank optical
`recordable discs; calculating machines, data processing equipment and computers; computer software; computer hardware; computer
`software, namely downloadable computer software and software recorded on computer-readable media, for analyzing, maintaining,
`improving and optimizing computer operating systems and processes, including PC booting processes, web browsers, application
`processes and service behavior of computers; computer software, namely downloadable computer software and software recorded on
`computer-readable media, for analyzing and identifying resource obstacles in a user's PC booting process, web browsers, application
`processes and computer service behavior, and for analyzing and identifying additional parameters that retard or prevent the user's desired
`actions, and for reconfiguring certain applications to improve the speed of the boot and the behavior, performance and stability of
`particular software and hardware; computer software, namely downloadable computer software and software recorded on computer-
`readable media, for facilitating the monitoring, administration and management of personal computers and networks and for facilitating
`the provision of technical support services in connection therewith; interactive knowledge-management database for gathering and
`analyzing technical data and statistical information to provide insights about PC software and hardware behavior and problems, and to
`provide remedies to alleviate PC usage inefficiency either in downloadable format from a website or on computer-readable media ”
`
`Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods
`and/or services is unclear.  See TMEP §§1402.01, 1402.03.
`
`The following substitute identification with amended wording is suggested, if appropriate:
`
`“Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; apparatus for
`recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank magnetic recordable discs, blank optical
`recordable discs; calculating machines, data processing equipment and computers; COMPUTER SOFTWARE FOR {SPECIFY THE
`FUNCTION OF THE PROGRAMS, E.G., USE IN DATABASE MANAGEMENT, USE AS A SPREADSHEET, WORD
`PROCESSING, ETC. AND, IF SOFTWARE IS CONTENT- OR FIELD-SPECIFIC, THE CONTENT OR FIELD OF USE};
`computer hardware; computer software, namely downloadable computer software and software recorded on computer-readable media, for
`analyzing, maintaining, improving and optimizing computer operating systems and processes, including PC booting processes, web
`browsers, application processes and service behavior of computers; computer software, namely downloadable computer software and
`software recorded on computer-readable media, for analyzing and identifying resource obstacles in a user's PC booting process, web
`browsers, application processes and computer service behavior, and for analyzing and identifying additional parameters that retard or
`prevent the user's desired actions, and for reconfiguring certain applications to improve the speed of the boot and the behavior,
`performance and stability of particular software and hardware; computer software, namely downloadable computer software and software
`recorded on computer-readable media, for facilitating the monitoring, administration and management of personal computers and
`networks and for facilitating the provision of technical support services in connection therewith; interactive knowledge-management
`database for gathering and analyzing technical data and statistical information to provide insights about PC software and hardware
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`behavior and problems, and to provide remedies to alleviate PC usage inefficiency either in downloadable format from a website or on
`
`computer-readable media ” in Class 009  
`Note:
`
`1.      Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names
`within this class.
`
`Class 035  
`
`Identification acceptable as filed.
`
`Class 042  
`
`Applicant filed the following identification:
`
`“Scientific and technological services, namely research and design in the field of computer operating systems and processes; scientific
`and technological services, namely, industrial analysis and research services in the field of computer hardware, software and operating
`systems and processes; design and development of computer hardware and software; design and development of computer hardware and
`software for others; development, design, installation, updating, maintenance and repair relating to computer software for computer
`operating systems and processes including PC booting processes, web browser and application processes; technical support services,
`namely troubleshooting of problems relating to computer software for computer operating systems and processes including PC booting
`processes, web browser and application processes and computer hardware problems relating thereto; computer technology support
`services, namely, help desk services relating to computer software for computer operating systems and processes including PC booting
`processes, web browser and application processes and computer hardware problems relating thereto; computer software and hardware
`consulting services relating to computer operating systems and processes including PC booting, web browser and application processes;
`computer consultation relating to computer software for operating systems and processes including PC booting processes, web browser
`and application processes, and computer hardware relating thereto; providing on-line non-downloadable software for analyzing,
`maintaining, improving and optimizing computer operating systems and processes, including PC booting processes, web browsers,
`application processes and service behavior of computers; providing on-line non-downloadable software for analyzing and identifying
`resource obstacles in a user's PC booting process, web browsers, application processes and computer service behavior, and for analyzing
`and identifying additional parameters that retard or prevent the user's desired actions, and for reconfiguring certain applications to
`improve the speed of the boot and the behavior, performance and stability of particular software and hardware; providing on-line non-
`downloadable interactive knowledge-management database for gathering and analyzing technical data and statistical information to
`provide insights about PC software and hardware behavior and problems, and to provide remedies to alleviate PC usage inefficiency;
`providing on-line non-downloadable computer software, applications, computer software support platforms, application programming
`interface (API) software and websites for facilitating the monitoring, administration and management of personal computers and
`networks; providing on-line non-downloadable computer software, applications, computer software support platforms, application
`programming interface (API) software and websites for facilitating the provision of technical support services for personal computers and
`networks, including the provision of technical support services by others ”
`
`Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods
`and/or services is unclear.  See TMEP §§1402.01, 1402.03.
`
`The following substitute identification with amended wording is suggested, if appropriate:
`
`“Scientific and technological services, namely research and design in the field of computer operating systems and processes; scientific
`and technological services, namely, industrial analysis and research services in the field of computer hardware, software and operating
`systems and processes; design and development of computer hardware and software; design and development of computer hardware and
`software for others; development, design, installation, updating, maintenance and repair OF computer software for computer operating
`systems and processes including PC booting processes, web browser and application processes; technical support services, namely
`troubleshooting OF COMPUTER SOFTWARE PROBLEMS FOR computer operating systems and processes including PC booting
`processes, web browser and application processes; computer technology support services, namely, help desk services relating to computer
`software for computer operating systems and processes including PC booting processes, web browser and application processes and
`computer hardware problems relating thereto; CONSULTANCY IN THE FIELD OF DESIGN AND DEVELOPMENT OF
`COMPUTER HARDWARE AND SOFTWARE relating to computer operating systems and processes including PC booting, web
`browser and application processes; computer consultation IN THE FIELD OF computer software for operating systems and processes
`including PC booting processes, web browser and application processes; providing on-line non-downloadable software for analyzing,
`maintaining, improving and optimizing computer operating systems and processes, including PC booting processes, web browsers,
`application processes and service behavior of computers; providing on-line non-downloadable software for analyzing and identifying
`resource obstacles in a user's PC booting process, web browsers, application processes and computer service behavior, and for analyzing
`
` 
` 
` 
` 
` 
` 
` 
`

`

`and identifying additional parameters that retard or prevent the user's desired actions, and for reconfiguring certain applications to
`improve the speed of the boot and the behavior, performance and stability of particular software and hardware; providing on-line non-
`downloadable interactive knowledge-management database SOFTWARE for gathering and analyzing technical data and statistical
`information to provide insights about PC software and hardware behavior and problems, and to provide remedies to alleviate PC usage
`inefficiency; providing on-line non-downloadable computer software, SOFTWARE applications, computer software support platforms,
`application programming interface (API) software and websites SOFTWARE for facilitating the monitoring, administration and
`management of personal computers and networks; providing on-line non-downloadable computer software, SOFTWARE applications,
`computer software support platforms, application programming interface (API) software and websites SOFTWARE for facilitating the
`provision of technical support services for personal computers and networks, AND the provision of technical support services by others ”
`in Class 042  
`“Technical support services, namely, troubleshooting in the nature of the repair of computer hardware” in class 037
`
`“Computer consultation in the field of installation, maintenance and repair of computer hardware” in class 037
`
`Note:
`
`1.      Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names
`within this class.
`
`IDENTIFICATION MANUAL AND SCOPE ADVISORIES
`
`For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S.
`Acceptable Identification of Goods and Services Manual at http://tess2.uspto.gov/netahtml/tidm.html.   See TMEP §1402.04.
`
`An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the
`scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
`
`SIGNIFICANCE INQUIRY
`
`Applicant must explain whether “SOLUTO” has any meaning or significance in the industry in which the goods and/or services are
`manufactured/provided, or if such wording is a “term of art” within applicant’s industry.
`  Applicant must also explain whether this wording
`identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.
`
`If “SOLUTO” has a meaning in a foreign language applicant must provide a translation.
`
`Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP , 67 USPQ2d 1699, 1701
`(TTAB 2003); TMEP §814.
`
`/Paul Moreno/
`United States Patent and Trademark Office
`Attorney
`Law Office 103
`571-272-2651
`paul.moreno@uspto.gov
`
`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.uspto.gov/.   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.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
` 
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` 
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` 
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` 
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`SOLUTO LTD (docketing@mwzb.com)
`
`U.S. TRADEMARK APPLICATION NO. 85459170 - SOLUTO - FJW-0001-T
`
`8/27/2012 5:39:29 PM
`
`ECOM103@USPTO.GOV
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO LETTER (AN OFFICE ACTION) HAS ISSUED ON 8/27/2012 FOR
`SERIAL NO. 85459170
`
`Please follow the instructions below:
`
`TO READ OFFICE LETTER: Click on this link or go to http://portal.uspto.gov/external/portal/tow and enter the application serial
`number to access the Office letter
`
`PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.
`
`HELP: For technical assistance in accessing the Office correspondence, please e-mail TDR@uspto.gov.  Please contact the assigned
`examining attorney with questions about the Office letter.
`
` 
` 
` 
` 
` 
`   
`