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  76/472162

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

SPECIMEN

 

The specimen is unacceptable as evidence of actual trademark use because (1) it consists of advertising and (2) TRUNET identifies a markeplace for buying and selling products but it does not identify the software itself.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  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 tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 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.

An acceptable specimen might be a photograph of a display screen projecting the identifying trademark of a computer program.  It is not necessary that purchasers see the mark prior to purchasing the goods, so long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce.  In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, held sufficient). 

For downloadable computer software, the applicant may submit a specimen that shows use of the mark on an Internet website. However, such a specimen is acceptable only if the specimen itself indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.  TMEP section 904.04(d).  In this situation, there appears to be a download button, but it is used in connection with programs called WIZARDEXPRESS or TEKTEAM SUPPORT,  not TRUNET.

MARK AND DRAWING

The drawing displays the mark as TRUNET.  However, this differs from the display of the mark on the specimen, where it appears as TRUNET EXCHANGE.  The applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the specimen; or

 

(2)  submit a substitute specimen that shows use of the mark shown in the drawing. 

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).  The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(a); TMEP §807.14(a).

 

If a substitute specimen is submitted, 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) and 2.72(a); TMEP §904.09.

 

SPECIMEN VERIFICATION

 

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.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

 

 

/Kathleen M. Vanston/

Examining Attorney

Law Office 103

(703) 308-9103 ex 188

 

 

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.