UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/015559
APPLICANT: SMARTWORKS.COM INC
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CORRESPONDENT ADDRESS: KIMBERLY GAMBREL KILLWORTH GOTTMAN HAGAN ET AL 1 DAYTON CTR 1 S MAIN ST STE 500 DAYTON OH 45402-2074 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: SMARTWORKS.COM
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CORRESPONDENT’S REFERENCE/DOCKET NO: STD 1004 TA
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/015559
The assigned examining attorney has reviewed the statement of use filed on December 17, 2002, and has determined the following.
The drawing displays the mark as SMARTWORKS.COM. However, this differs from the display of the mark on the specimen, where it appears as SMARTWORKS. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).
If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 37 C.F.R. §§2.59(b) and 2.72(b); TMEP §904.09.
Notwithstanding, the acceptability of the specimens in depicting the mark which is the subject of this application, applicant is advised as follows:
The specimen is unacceptable as evidence of actual service mark use because it does not identify the services recited for International Classes 36, 38 and 40. TMEP §904.05. The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §§2.56 and 2.88(b)(2). Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §1301.04. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 37 C.F.R. §2.59(b); TMEP §904.09.
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.
A specimen is unacceptable if it does not show use of the service mark in relation to the identified service. Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). The specimen must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); TMEP §§1301.04 et seq. Therefore, the specimen must show the mark in reference to the particular services identified.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b).
Clarification is required as to the proper owner of this application pursuant to Section 1 of the Act. The office records show an assignment of the application form the original applicant The Standard Register Company to Smartworks.Com, Inc. However, the Statement of Use identifies the applicant as SMARTworks, L.L.C. and applicant is now required to clarify the proper name and legal owner of this application. In addition, applicant is required to establish whether or not it owns the two prior registrations it has claimed ownership of at the time it filed this application.
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
/Edward Nelson/
Examining Attorney
Law Office 106
(703) 308-9106 ext.197
(703)746-8106 (fax no.)
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.