Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number  76/092404

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

FINAL ACTION

 

This letter responds to the applicant's communication filed on February 17, 2004.

 

SPECIMEN OF USE AS SERVICE MARK

 

The applicant was previously required to submit a substitute specimen showing use of the mark in connection with the advertising or sale of the recited services.  The applicant has submitted a hard copy of “THE ETA REPORT.”  As was the case with the applicant’s previously submitted specimen, the use of the proposed mark “ETA” within the title of a document does not show use of the mark in the offering or advertising of “computer services, namely providing online manuals, white papers, reports, brochures, magazines and newsletters in the fields of business, financial and economic forecasting.”

 

The applicant’s use of the acronym “ETA” is not as a service mark for computer services or even on-line publication service provider services, but is the shorthand given to a type of analysis conducted by the applicant of the “statistical impact of key economic and financial variables upon most widely followed stocks, mutual funds, indexes, and portfolios.”  The use of the proposed mark in the substitute specimen is also not as a service mark.  An example of an acceptable specimen of service mark use would be a copy of a webpage advertising the applicant’s various publications under the mark “ETA,” rather than as the title of one type of report that can be generated for a range of subjects. 

 

The requirement for a substitute specimen showing use of the term “ETA” as a service mark in the sale or advertising of the recited services is maintained and made FINAL.  As the record does not show use of the proposed mark as a service mark, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  TMEP §§904.11 and 1301.02 et seq.

 

RESPONSE

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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. §2.65(a). 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

Jennifer D. Chicoski

Trademark Examining Attorney

Law Office 115

(703) 308-9115 x117

(703) 872-9208 - Fax

jennifer.chicoski@uspto.gov

 

 

 

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.  To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/   For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm