UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/199171 APPLICANT: ENGLAND, INC. | |
CORRESPONDENT ADDRESS: | RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 |
MARK: ENGLAND | |
CORRESPONDENT’S REFERENCE/DOCKET NO: 3178-200027 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. |
MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/199171
The assigned trademark examining attorney has reviewed the statement of use and has determined the following:
Substitute Specimen for Class 035 Services Required
The specimen is not acceptable for applicant’s Class 035 services because it does not show the applied-for mark used in connection with the services specified in International Class 035 in the statement of use. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and services in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b).
In the present case, the specimen consists of a label that is used in connection with applicant’s goods in Classes 020 and 027. A product label is not an acceptable specimen of use for the services because it does not show the mark being used in connection with the retail store services. It shows use only for applicant’s goods. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq. Please note that the substitute specimen provided on October 6, 2006 for applicant’s Class 035 services in applicant’s co-pending application serial number 76199329 would be an acceptable specimen of use for the Class 035 services identified in the instant application.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for its Class 035 services in the statement of use; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.
Sample Declaration for Substitute Specimen
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares 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; 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)
/Debra Lee/
Examining Attorney
Law Office 116
Voice: 571-272-5897
Fax: 571-273-9116
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.uspto.gov/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.