UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/179572
APPLICANT: Netfirms, Inc.
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CORRESPONDENT ADDRESS: W DENNIS MOSS RIDOUT & MAYBEE 2 ROBERT SPECK PARKWAY SUITE 901 MISSISSAUGA CANADA L4Z 1H8 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom107@uspto.gov
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MARK: NETFIRMS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/179572
This letter responds to the applicant’s communication filed on January 27, 2003.
Applicant amended the application February 26, 2001, by adding a Trademark Act § 44(d) basis. The amendment was supported with naked declarations submitted July 30, 2002, and January 27, 2003. A proper supporting affidavit or declaration contains a statement that “it had a bona fide intention to use the mark in commerce as of the filing date of the application.” See: Trademark Rule 2.34 (a)(4)(ii). Applicant must submit a proper affidavit or declaration signed by applicant’s representative.
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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
The refusal to register the mark under Trademark Act § 2(e)(1) is maintained.
The evidence submitted to prove distinctiveness of the mark is the type of evidence needed to prove a secondary meaning of the designation. However, due to the relatively short period of time during which applicant has used the mark in commerce, the evidence is insufficient to prove distinctiveness. Applicant is encouraged to submit additional evidence to prove that the mark has acquired a secondary meaning. See: TMEP § 1212.01. For example, applicant may submit advertising cost figures associated with the promotion of its services that are identified with its mark.
An application under Trademark Act Section 44(e), 15 U.S.C. §1126(e), must include a copy of a foreign registration from the applicant’s country of origin. The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01 and 1004.
The application does not contain a copy of the foreign registration. Therefore, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration. If the foreign certificate of registration is not written in English, the applicant must provide an English translation. The translator should sign the translation. See TMEP §§1004.01 and 1004.01(b).
/David C. Reihner/, Examining Attorney
Law Office 111, 703-308-9111 ext. 469
703-746-8107 fax. ecom107@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.