| To: | ST. JOSEPH'S HOSPITAL AND MEDICAL CENTER (julie.dennis001@chw.edu) |
| Subject: | TRADEMARK REGISTRATION NO. 1620541 - BARROW - N/A |
| Sent: | 08/09/10 06:51:29 PM |
| Sent As: | PRG@uspto.gov |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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REGISTRATION NO: 1620541
REGISTRANT: ST. JOSEPH'S HOSPITAL AND MEDICAL CENTER
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August 9, 2010 |
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BARROW
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Registration date, registration number, mark and registrant's name. 2. Date of this Office Action. 3. Examiner's name and Post Registration Division. 4. Your telephone number and e-mail address.
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Registration Number 1620541
The Combined Section 8 Affidavit & Section 9 Renewal Application was received on August 2, 2010. The Section 9 portion of the combined filing is accepted. However, the Section 8 portion is not accepted for the reason(s) set forth below.
The specimen of record is unacceptable to show service mark use because it does not reference the services. Where a mark is used in advertising the services, the specimen must show an association between the mark and the services in the registration. A specimen that shows only the mark, with no reference to the services either on the specimen or in descriptive wording in the mark, does not show service mark usage. See In re Adair, 45 USPQ2d 1211 (TTAB 1997); TMEP §§1301.04(b) and (c).
Examples of acceptable specimens for services include signs, brochures, or advertisements that show the mark used in the sale or advertising of the services. TMEP §1301.04 et seq.
The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 10-year Section 8, that is, within the one year before the end of a 10-year period after the date of registration.
Renewal of the registration is requested.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
__________________________
Signature of Authorized Person
__________________________
Type or Print Name
__________________________
Date
(1) A person with legal authority to bind the owner;
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; and
(3) An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.
37 C.F.R. §2.161(b); TMEP §§804.04 and 1604.08(a).
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the issuance date of this Office action or on or before the registration expiration date of October 30, 2010, whichever is later. The owner must respond to all inquiries set forth in this Office action to avoid cancellation and/or expiration of the registration. 37 C.F.R. §§2.163(b)-(c) and 2.184(b); TMEP §§1604.16, 1606.12 and 1606.13(a).
DEFICIENCY SURCHARGE INFORMATION: A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after the registration expiration date of October 30, 2010. 37 C.F.R. §§2.6, 2.164(a)(1) and 2.185(a)(1).
ADVISORY: If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation and/or expiration of its registration by filing a new affidavit of use and a new renewal application within the grace period. 37 C.F.R. §§2.163(c) and 2.184(b)(1). Additional fees are required to file a new renewal application during the grace period. 37 C.F.R. §§2.161(d)(1)-(2) and 2.183(b)-(c). For more information about this, please contact the undersigned.
Sincerely,
Tamika Whitsey
TM Specialist
Post Registration Division
571-272-4321 office
571-273-4321 fax
tamika.whitsey@uspto.gov
How to respond to this Office Action:
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the registration number, the words 'Post Registration' and the examiner's name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.
PLEASE ENCLOSE THIS FORM WITH YOUR RESPONSE
**This form must be included with your response to ensure proper fee processing.**
The Post Registration Paralegal has determined that the amounts indicated below are outstanding:
$________ Section 8 affidavit filing fee (fee code 6205)
$_____ Section 8 affidavit grace period surcharge (fee code 6206)
$________ Section 8 affidavit deficiency surcharge (fee code 6207)
$________ Section 9 renewal application filing fee (fee code 6201)
$_____ Section 9 renewal application grace period surcharge (fee code 6203)
$________ Section 9 renewal application deficiency surcharge (fee code 6204)
$________ Section 15 affidavit filing fee (fee code 6208)
$________ Section 7 correction (registrant error) filing fee (fee code 6212)
$________ Section 7 amendment filing fee (fee code 6214)
$________ Section 7 issue new certificate of registration filing fee (fee code 6211)
$_100___ Deficiency surcharge Sec. 8—if response filed after October 30, 2010 (fee code 6207)
Date