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  76/349627

 

The assigned examining attorney has reviewed the statement of use filed on February 7, 2003 and has determined the following.

 

Signed Copy of Statement of Use Must be Filed

 

It is noted that only the “Certificate of Mailing” in support of the Statement of Use filed on April 4, 2003 has been signed and dated by Mr. Rodriguez.  The Declaration in support of the Statement of Use has not been signed. The requirement that a statement of use include a signed verification or declaration is a statutory requirement that must be satisfied before expiration of the deadline for filing the statement of use.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(3); In re Kinsman, 33 USPQ2d 1057 (Comm’r Pats. 1993).  TMEP Section 1109.11.

 

In order to avoid a finding of abandonment for failure to time file an acceptable Statement of Use, the applicant must file a supplemental and fully executed Statement of Use in the Trademark Office on or before the July 28, 2003 due date for filing an acceptable Statement of Use. [1]  Additional fees are NOT required.

Mark does not Function as a Service Mark for Applicant’s Services

 

The Examining Attorney refuses registration because the proposed mark has not been shown to  function as a service mark. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  Based on the present record, there is no verified evidence from the applicant that the  proposed mark is actually used in association with the identified services in such a manner as to identify and distinguish the services of the applicant from those of others, or to indicate the source of the identified services.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq. 

 

Please note that the proposed mark does not function as a service mark because the specimen submitted with the statement of use is unacceptable as evidence of actual service mark use for the services recited in the Notice of Allowance.  Therefore, the proposed mark has not been shown to identify and distinguish the applicant's services from those of others or to indicate their source. 

A mark is deemed to be used in commerce "on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce...." Trademark Act Section 45, 15 U.S.C. Section 1127.  A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application, or in the actual rendering of the identified services. 37 C.F.R. §2.56(b)(2).  Moreover, the  specimens must show use of the mark in the actual sale, advertising or performance of services.  Trademark Act Section 45, 15 U.S.C. Section 1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973); TMEP section 1301.02.  Additionally, the specimens must show use of the service mark in relation to the identified service.  Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). 

 

Acceptable specimens may include newspaper, magazine or web site  advertisements, brochures, billboards, handbills, direct-mail leaflets, and the like.  However, printer’s proofs or printouts of the proposed mark, without more,  are not accepted because they do not show actual use of the mark, by the applicant, in commerce, on or in connection with the sale, promotion or rendering of the identified services.  See TMEP §1301.04.

 

The specimen submitted with the Statement of Use is unacceptable as evidence of actual service mark use because it is merely an artist’s drawing of the mark and/or a computer print-out of the proposed mark on otherwise blank paper.  As such, it does not show actual use of the mark in commerce.   The specimen also fails because there is no reference made to or other association of the specimen with services identified in the application. 

 

The applicant must demonstrate how the mark is used with the services by submitting an acceptable specimen of the actual manner in which the mark is used in commerce in association with the identified services.  In re Restonic Corp., 189 USPQ 248 (TTAB 1975); 37 C.F.R. §2.56; TMEP §§1301.04 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).

 

For example, a specimen such as the web page promotion attached hereto, would be an acceptable specimen of actual use of the mark in commerce, if submitted for the record by the applicant together with verification of the use of such a specimen in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.

 

Declaration in Support of  Substitute Specimen

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20, which should be signed by an authorized person on behalf of the applicant and returned with at least one specimen showing actual use of the subject mark in association with the identified services. 

Declaration Under Rule 2.20 in Support of Substitute Specimen

 

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that the substitute specimen submitted herewith was in use in commerce in association with the services identified in this application prior to the expiration of the time allowed to the applicant for filing a statement of use; that the facts set forth in this application are true and that 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).

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.

 

 

 

          /BASL/

Barbara A. Loughran

Trademark Examining Attorney

Law Office 113

Phone: 703-308-9113 ext. 208

 

 

 

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.