UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/374125
APPLICANT: Genomatix Software GmbH
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ELDORADO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 60048.4-US-0
CORRESPONDENT EMAIL ADDRESS: |
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 76/374125
The assigned trademark examining attorney has reviewed the statement of use and has determined the following.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56, 2.59(b) and 2.88(b)(2); TMEP §§904.09 and 1109.09(b).
The current specimens of record for this class comprise several screen shots of applicant’s website. Although these specimens display the mark, they are unacceptable as evidence of actual service mark use because none demonstrate use of the mark with the identified services. Instead, the screen shots discuss applicant’s software goods; they do not mention or otherwise show that the applicant is providing software development services for others.
In addition to not demonstrating use of the mark with the identified services, the specimens also indicate that the applicant is not actually offering software development as a service. Instead, the activity appears to be ancillary to the applicant’s production of its Class 9 software goods. For trademark registration purposes, an activity is considered to be a “service” only when it is performed for the benefit of third parties. When an activity inures to the benefit of the applicant – as in manufacturing its own goods that is sells – the activity is not considered to be a service. Applicant’s specimens indicate that such is the case with the Class 42 services. If so, applicant must delete these services from the application.
If not, however, applicant should submit a substitute specimen for Class 42. 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. TMEP §§1301.04 et seq. Please note that the substitute specimen must be accompanied by a declaration or verified statement, as discussed above. Sample language for such a declaration reads as follows:
The substitute specimen was in use in commerce prior to the expiration of the time allowed 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 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), 1126(d) or 1126(e), 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; 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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Susan Stiglitz/
Trademark Examining Attorney
USPTO
Law Office 103
(571) 272-9285
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.