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  76/402892

 

This letter responds to the applicant's communication filed on April 30, 2003.

 

The deletion of goods in International Class 16 is acceptable.

 

Recitation of Services

 

The original recitation of services was “consulting services, namely, providing process appraisal services to organizations engaged in the acquisition or production of products and services.”  The applicant has proposed amending the recitation of services to “business appraisal consulting services, namely, providing training in process appraisal to organizations engaged in the acquisition of production of products and services” in International Class 35.  As stated in the first Office Action, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.  Training services are not within the scope of process appraisal services.  Therefore, the amendment to the recitation of services is unacceptable. 

 

The requirement to submit an acceptable recitation of services is maintained and made FINAL.  The applicant may adopt the following recitation, if accurate:  “Business appraisal consulting services, namely, providing process appraisal services to organizations engaged in the acquisition or production of products and services” in International Class 35.  TMEP §1402.11.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification.

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Specimen

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the mark in the sale or advertising of the services listed in the application, namely, appraisal services.  The applicant has stated that the “partner” that is targeted in the advertisement is the organization to which the services are offered.  However, it appears that the “partner” will be offering the SCAMPI services.   The advertisement is not directed to the actual consumers of the applicant’s appraisal services.

 

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.  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 applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.   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 at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  These requirements are maintained and made FINAL.

 

The examining attorney has enclosed the following example of a substitute specimen declaration for the applicant’s use in preparing their own declaration.

 

SUBSTITUTE SPECIMEN DECLARATION

Serial No.                       

Mark:                                               

Applicant:                       

 

The substitute specimens were in use in interstate commerce at least as early as the filing date of the application.

 

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 facts set forth in this application are true; 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, if applicable)

                        _____________________________

                                    (Date)

 

Response Guidelines

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

/Leslie L. Richards/

Trademark Examining Attorney

Law Office 106

703-308-9106 ext. 172

703-746-8106 fax

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.