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  76/342805            DIRECTV

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

The applicant must submit a substitute specimen

The specimen is unacceptable as evidence of actual service mark use because it fails to demonstrate use of the mark in conjunction with any activity which may be characterized as “retail store services.”  TMEP §904.05.  The specimen submitted by the applicant merely demonstrates that the applicant is engaged in the sale of its own branded equipment.  The mere sale of one’s own goods does not constitute a “service” as contemplated by the Trademark Act.

 

The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) a service cannot be merely an ancillary activity or one which is necessary to the applicant’s larger business.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB 1992); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).

 

In this case, the activity is clearly necessary to the applicant’s larger businesses of manufacturing electronic goods and providing broadcasting which can only be received through the use of the applicant’s electronic goods.

 

Therefore, the applicant must submit a specimen showing the mark as it is used in commerce in conjunction with actual retail store services.  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.

 

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

 

 

/Michael W. Baird/

Examining Attorney

Law Office 114

Telephone: (703) 308-9114 ext. 107

Fax:            (703) 746-6370

 

 

 

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.