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  76/4148

 

This letter responds to the Applicant’s communication dated August 21, 2003.

 

The applicant (1) amended the recitation of services and (2) submitted a substitute-drawing page.  Item (2) is acceptable and has been entered into the record.

 

Signed Declaration Required

 

A Final Office action is appropriate when a clear issue has been developed between the examining attorney and the applicant, i.e., the examining attorney has previously raised all outstanding issues and the applicant has had an opportunity to respond to them.  TMEP § 714.03.  Therefore, although the applicant has not submitted any argument against a requirement for a substitute declaration, a final refusal to register follows.

 

The applicant was required to submit a signed declaration.   The applicant did not respond to this issue, nor did the applicant submit a signed declaration.  Therefore, the requirement that the applicant submit a signed declaration is maintained and made final.

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. Sections 2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii).

 

The following declaration is provided for the applicant's convenience:

 

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; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; 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.

 

 

_____________________________

                (Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

                    (Date)

 

Classification and Recitation of Services

 

The applicant was required to amend the recitation of services.  The amended recitation of services is unacceptable.

 

The wording “pubs, diners, taverns” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “restaurant services in the nature of diners; bar services in the nature of pubs and taverns,” if accurate.  TMEP §1402.11.

 

The proposed amendment of the identification is unacceptable because the wording coffee supply services for offices designates services that are not within the scope of the identification that was set forth in the application at the time of filing.  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 et seq. and 1402.07.  The applicant may adopt the following recitation of services, if accurate:  coffee supply services for restaurants, self-services restaurants, canteens, bars, cafes, and snack bars.

 

The applicant may adopt the following recitation of services, if accurate:

 

            International Class 043: Restaurant services, namely providing food and drink; restaurants; snack bars; cafes; restaurant services in the nature of diners; bar services in the nature of pubs and taverns; canteen services; cocktail lounges; coffee supply services for restaurants, self-services restaurants, canteens, bars, cafes, and snack bars; contract food services; food preparation services; providing temporary housing accommodations; food and drink catering services; hotels; boarding houses; hostels; motels; resort lodging services; making hotel and temporary accommodations reservations for others; animal boarding; rental of transportable buildings, bars and tents; rental of chairs, tables, table linen, glassware and bar equipment

 

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.

 

Response Guidelines 

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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. §2.65(a). 

 

 

 

/Toni Y. Hickey/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 X134

 

 

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.