UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/369491
APPLICANT: TRANSPORTES CONTINUOS INTERIORES S.A.
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CORRESPONDENT ADDRESS: JAMES WILLIAM PRAVEL, ESQ. PRAVEL INTELLECTUAL PROPERTY LAW, P.C. 200 DAINGERFIELD ROAD, SUITE 400 ALEXANDRIA, VIRGINIA 22314
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: TCI
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CORRESPONDENT’S REFERENCE/DOCKET NO: 0030.9
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 76/369491
The examining attorney has reviewed the statement of use filed on October 29, 2003, and determined the following.
The Examining Attorney refuses registration because the proposed mark does not function as a trademark. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127. The proposed mark neither identifies and distinguishes the services of the applicant from those of others nor indicates their source. 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 specimens submitted with the statement of use are unacceptable as evidence of actual service mark use for the services recited in the Notice of Allowance; therefore, the proposed mark cannot identify and distinguish the applicant's services from those of others nor indicate their source.
The specimen is unacceptable as evidence of actual service mark use because it is in Spanish. The examining attorney cannot determine whether the mark is being used to specify the services. A specimen is unacceptable if it does not show use of the service mark in relation to the identified service. Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). The specimen must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); TMEP §§1301.04 et seq. Therefore, the specimen must show the mark in reference to the particular services identified. There is no reference to services recited in the application.
The applicant must demonstrate how the mark is used with the services by submitting an acceptable specimen. In re Restonic Corp., 189 USPQ 248 (TTAB 1975); 37 C.F.R. §2.56; TMEP §§1301.04 et seq. 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 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).
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.
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.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
/Khanh M. Le/
Trademark Attorney
Law Office 113
(703) 308-9113 x127
ecom113@uspto.gov
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.