UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/460767
APPLICANT: CNF INC.
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CORRESPONDENT ADDRESS: ANDREW J. GRAY IV PENNIE & EDMOND LLP 3300 HILLVIEW AVE PALO ALTO CA 94304-1203
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov
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MARK: CON-WAY AIR SOLUTIONS SPECIALIST
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CORRESPONDENT’S REFERENCE/DOCKET NO: 9524-0470-99
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 76/460767 CON-WAY AIR SOLUTIONS SPECIALIST
This letter responds to the applicant's communication filed on August 15, 2003.
The proposed amendment of the identification is unacceptable because the wording “transportation services, namely airfreight forwarding services” designates services that are not within the scope of the identification that was set forth in the application at the time of filing. Air freight forwarding is not within the scope of facilitating a quality control program. 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 failed to provide an acceptable specimen evidencing the services. Accordingly, this requirement is maintained and continued. The specimen does not identify the commercial use of the mark to advertise a “preferred customer service program.” The specimen is a certificate which expressly acknowledges the recipient’s completion of a training program. The certificate does not represent use in commerce of the mark for the services identified.
The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. 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 at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09.
The following is a properly worded declaration under 37 C.F.R. §2.20. At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).
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.
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(Signature)
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No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
If the applicant does not have an attorney the applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The Patent and Trademark Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
If the applicant has any questions or needs assistance in responding to this office action, please telephone the assigned examining attorney.
/Idi Aisha Clarke/
Trademark Attorney
Law Office 105
(703) 308-9105 Ext. 248
Fax: (703) 872-9825
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.