UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/094809
APPLICANT: Ceres Group, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
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MARK: GET CONNECTED
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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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FOR RECONSIDERATION
Serial Number 76/094809
This letter responds to the applicant’s communication filed on August 4, 2004. The applicant is requesting reconsideration of a final refusal dated June 1, 2004. The applicant has amended the identification of the services. The amendment is acceptable and has been made of record. The applicant has additionally provided a substitute specimen. Because he applicant’s request for reconsideration raises a new issue, the applicant’s request for reconsideration is granted.
Registration is refused because the proposed mark, as used on the specimen of record, does not function as a service mark to indicate the source of the services. Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.
The specimen of record, along with any other relevant evidence submitted with the application, is reviewed and analyzed in order to determine whether a term is being properly used as a service mark. In re Volvo Cars of North America, 46 USPQ2d 1455 (TTAB 1998); In re Morganroth, 208 USPQ 284 (TTAB 1980). Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as marks, even though they may have been adopted with the intent to do so. A designation cannot be registered unless ordinary purchasers would be likely to regard it as an indicator of origin for the services identified in the application. In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); TMEP §§1301.02 et seq.
In its request for reconsideration, the applicant has submitted a substitute specimen in the form of a brochure. The mark appears it two instances, where the brochure reads, “GET CONNECTED TO QQLINK AND BECOME EMPOWERED WITH INTERNET TECHNOLOGY" and "GET CONNECTED TODAY IT'S AS EASY AS 1, 2, 3" The mark does not function as a service mark on the specimen because it is simply part of informational text that discusses connecting to the Internet.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The substitute specimen is not acceptable because it does not evidence the applicant’s services, it does not show he mark used as a service mark and it is not supported with the required supporting statement and declaration. Thus, the final requirement for an acceptable specimen of use showing the mark used as a mark in connection with the services identified, i.e., “Insurance brokerage via global computer networks,” is continued and maintained.
If the applicant cannot comply with the requirement for an acceptable specimen of use for the Section 1(a) (use in commerce) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert an intent-to-use basis under Section 1(b). To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement: “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.” This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
Thus, if the applicant intends to amend the application to delete the use basis asserted under Section 1(a) and substitute an intent-to-use basis under Section 1(b), the applicant should provide the following declaration exactly as worded, if accurate:
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 statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
The time for appeal runs from the date the final action was mailed. 37 C.F.R. Section 2.64(b); TMEP Section 715.03(c).
NOTICE: TRADEMARK OPERATION RELOCATING IN OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Tracy L. Fletcher/
Trademark Examining Attorney
Law Office 115
U.S. Patent & Trademark Office
Telephone: (571) 272-9471
Facsimile: (571) 273-9471
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.