Offc Action Outgoing

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  76/373273

 

The assigned examining attorney has reviewed the statement of use filed on May 29, 2003,  and has determined the following.

 

UNACCEPTABLE SPECIMEN

 

The specimen does not show use of the mark for any services identified in the statement of use.  The applicant must submit a specimen showing use of the mark for the services specified.  37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b).  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 and 1109.09(a).

 

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.

 

The current specimen shows use of the phrase sought to be registered in close connection with the term NEVO.  These expressions appear to be used only in advertising a computer software program that can be used to perform functions for others.  Note how the specimen refers to the model number of the apparent goods and to their specifications.  Use in advertising such a program is not service mark use.  Note also that developing one’s own software program is not a service for others.  The specimen must show use in connection with the recited services, which must be done for others.  (Note also that use in advertising one’s goods is also not normally valid trademark use for the goods).  The applicant herein is relegated to submitting a specimen showing service mark use for the recited services.  Even valid trademark use for goods would not suffice herein.

 

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 applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b). 

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

/Steven Foster/ Trademark Attorney

Law Office 106

(703) 308-9106 Ext. 123

Fax number for the Law Office: (703) 746-8106

E-mail responses: ecom106@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.

 

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.