Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/349696

 

The assigned trademark examining attorney has reviewed the amendment to allege use and has determined the following:

 

The Amendment to Allege Use is accepted vis-à-vis the goods in International Class 9 only.

 

Refusal of Registration – Record Does Not Establish that Mark Actually Functions as a Source Indicator for the Identified Services

 

Please Note: This refusal applies only to the services in Classes 41 and 42.

 

The Examining Attorney refuses registration in Classes 41 and 42 on the now asserted actual use basis because, on the present record, use of the mark in the manner of a source indicating mark for the identified services has not been established.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.   Please note that this refusal is based on the fact that the specimens submitted with the Amendment to Allege Use are not acceptable to establish actual use of the mark for the identified services in Classes 41 and 42.

 

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.  Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services or in the actual rendering of the identified services. TMEP §§1301.04 et seq.  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). 

 

The specimens submitted with the Amendment to Allege Use are not acceptable in support of the Class 41 and 42 services because they fail to show use of the subject mark in relation to any of the services identified in Classes 41 and 42.  Accordingly, in order to maintain the asserted Section 1(c) actual use basis, the applicant must demonstrate how the mark is used with the services by submitting, for each Class of services included and maintained in the application, 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.  

 

Applicant must submit a statement that “the substitute specimen(s) was/were in use in commerce prior to the filing of the amendment to allege use,” verified with a signed, dated and notarized affidavit or a signed and dated declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(1); TMEP §§904.09 and 1104.09(e).

 

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).

 

Declaration in Support of Substitute Specimens

 

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 substitute specimen(s) was/were in use in commerce prior to the filing of the amendment to allege use; that the facts set forth in this application are true; that all statements made of his/her own knowledge are true; and that 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).

 

 

/Barbara A. Loughran/

Trademark Examining Attorney

Law Office 113

(571) 272-9189

email: barbara.loughran@uspto.gov

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).

 

• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.