UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/120792

 

The assigned examining attorney has reviewed the statement of use filed on May 30, 2003 and has determined the following.

 

Specimen of Use

The applicant has provided a specimen of use for both the goods and services in the form of printed web pages from the applicant’s web site.  The specimens are acceptable to show service mark use with the services identified.  However, for the reasons set forth below, the specimens are not acceptable for the goods identified in International Class 9.

 

The specimen is unacceptable as evidence of actual trademark use on the goods identified in International Class 9 because the specimen does not show the mark used on the goods identified.  Rather, the specimen consists of several web pages that advertise the applicant and the services provided by the applicant which include the design and development of custom software. 

 

The examining attorney notes that  invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). 

 

In its statement of use, the applicant states, “Applicant’s mark cannot be used on Applicant’s goods in a traditional manner since Applicant’s goods are not sold in physical form.  Applicant’s goods are generally downloaded via an Internet connection or occasionally, personally installed by the Applicant at the consumer’s place of business.” 

 

The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods.  15 U.S.C. §1127 (definition of “use in commerce”); 37 C.F.R. §2.56(b)(1).  However, this provision is not intended as a general alternative to submitting labels, tags, containers or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable.  A mere assertion of impracticability is not sufficient to establish that such use is impracticable; rather, the record must indicate that the goods are in fact of such a nature.  For     example, it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars.  TMEP section 904.04.

 

The computer program, video tape, and movie industries have adopted the practice of applying trademarks that are visible only when the goods, i.e., programs or movies, are displayed on a screen (for example, on the first several frames of a movie).  For this reason, an acceptable specimen might be a photograph of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark in addition to the traditional tag or label that might appear on a computer disc or product container.

 

The applicant has indicated that the goods are “generally downloaded via the Internet.”  For downloadable computer software, the applicant may submit a specimen that shows use of the mark on an Internet website.  However, such a specimen is acceptable only if the specimen itself indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.  Because the web pages submitted do not show a button that would allow downloading of the software, the specimen is not acceptable. 

 

The examining attorney notes that if the applicant intends to rely on a specimen of use showing the mark used on a web page featuring a button for downloading the applicant’s software, the identification of goods should be amended to identify the goods as downloadable software.

 

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 tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  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 and 1109.09(b).  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).   The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

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 and 1109.09(a).

 

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

 

/Tracy L. Fletcher/

Examining Attorney

Law Office 115

Phone:  (703) 308-9115 ext. 205

Facsimile:  (703) 872-9875

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.