UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/224080
APPLICANT: Yeung, Anthony T.
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CORRESPONDENT ADDRESS: LESLEY S CRAIG TOWNSEND AND TOWNSEND AND CREW LLP TWO EMBARCADERO CENTER 8TH FLOOR SAN FRNCISCO CA 94111-3834
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
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MARK: EVOCATIVE CHROMODISCOGRAPHY
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CORRESPONDENT’S REFERENCE/DOCKET NO: 19371-000500
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 76/224080
The assigned examining attorney has reviewed the statement of use filed on April 16, 2003 and has determined the following.
The examining attorney refuses registration because the proposed mark does not function as a service mark. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127. It neither identifies and distinguishes the services of the applicant from those of others nor indicates their source. 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.
In this case, the mark appears to identify a type of medical procedure. It would not be perceived as the source of the applicant’s medical services as it is used on the specimen of record. The mark is not used in such a fashion that would readily be perceived as a service/trademark. In particular, the lack of prominence of the proposed mark compared with adjacent copy on the specimens is such that it would be unlikely that it would be perceived as a service mark. It is not contemplated that the public will be expected to browse through a group of words, or scan an entire page in order to determine whether a particular word, separated from its context, may or may not have been intended to serve as a mark. Ex parte National Geographic, 83 USPQ 260 (Comm'r Pats. 1949), In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982).
The specimen is unacceptable as evidence of actual service mark use because it would not be perceived as a service mark. TMEP §904.05. 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 signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §1301.04. 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.
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Tracy Cross
/Tracy Cross/
Law Office 103
Phone: (703) 308-9103 ext. 224
Fax: (703) 746-8103
E-mail: ecom103@uspto.gov
FEE INCREASE EFFECTIVE JANUARY 1, 2003
EFFECTIVE JANUARY 1, 2003, THE FEE FOR FILING AN APPLICATION FOR TRADEMARK REGISTRATION WILL BE INCREASED TO $335.00 PER INTERNATIONAL CLASS. THE USPTO WILL NOT ACCORD A FILING DATE TO APPLICATIONS THAT ARE FILED ON OR AFTER THAT DATE THAT ARE NOT ACCOMPANIED BY A MINIMUM OF $335.00.
ADDITIONALLY, THE FEE FOR AMENDING AN EXISTING APPLICATION TO ADD AN ADDITIONAL CLASS OR CLASSES OF GOODS/SERVICES WILL BE $335.00 PER CLASS FOR CLASSES ADDED ON OR AFTER JANUARY 1, 2003.
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.