UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/475163
APPLICANT: Robinson, Tom
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CORRESPONDENT ADDRESS: CHRISTOPHER R. GROBL, ESQ SILVER STATE LEGAL 4625 W NEVSO DR LAS VEGAS NV 89103-7702
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom115@uspto.gov
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MARK: BASKETHEAD
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CORRESPONDENT’S REFERENCE/DOCKET NO: TR
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 76/475163
This letter is in response to the Applicant’s communication dated March 27, 2003.
The applicant submitted a substitute specimen and a supporting declaration and amended the recitation of services.
In an action dated March 20, 2002 the applicant was advised that the specimen was unacceptable as evidence of actual service mark use because it did not show use of the mark in connection with the services identified in the application. The examining attorney required the applicant to submit a substitute specimens that showed use of the mark in connection with the services. The requirement that the applicant submit a substitute specimen is continued and made final.
Whether a specimen is acceptable to evidence use of the subject matter as a service mark depends upon whether it shows use of the mark in association with the recited services (i.e., in their sale or advertising). The manner of use on the specimens must be such that potential purchasers would readily perceive the subject matter as identifying and distinguishing the applicant's services and indicating their source, even if that source is unknown. TMEP Section 1301.04 A specimen which shows the alleged mark but which makes no reference to the services offered or performed thereunder is not evidence of service mark use. Intermed Communications Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). There must be something that creates in the mind of the purchaser an association between the mark and the service activity. In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB1994).
In this case, there is nothing on the proffered specimen that would create an association between the proposed mark BASKETHEAD and entertainment services in the nature of providing services related to the disc golf industry, including but not limited to, the advertising and promotion of merchandise, apparel and sporting events. The proffered specimen displays the term BASKETHEAD, however, the specimen does not show BASKETHEAD uses in connection with entertainment services. Moreover, the specimen is devoid of any language or depiction indicating that BASKETHEAD is a source indicator for advertising and promotional services. Instead, it appears that the proposed mark BASKETHEAD is used in connection with online retail store services.
The applicant must submit a specimen showing the mark as it is used in commerce in connection with the service identified in International Class 035 and 041 (see below). 37 C.F.R Section 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 section 1301.04. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 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. Section 2.59(a); TMEP section 905.10.
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. Section 2.20. The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by an individual authorized to sign the declaration.
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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(Print or Type Name and Position)
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(Date)
The applicant was required to make an amendment to the recitation of services in order to make it more definite. The applicant amended the recitation of services, however, the identification still lacks requisite specificity. The requirement that the recitation of services be made more definite is therefore, continued and made final.
The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).
The wording in the recitation of services is unacceptable as indefinite. The activities recited in the identification do not constitute services as contemplated by the Trademark Act. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§1301.01 et seq. The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) a service cannot be merely an ancillary activity or one which is necessary to the applicant’s larger business. In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB 1992); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979). In this case, it is not clear whether the applicant is promoting their own sporting events/merchandise/apparel, which is not a service contemplated by the Trademark Act, or if the applicant is promoting the sporting events/merchandise/apparel of others. The applicant may adopt the following recitation of services, if accurate: promoting the sporting events of others; promoting the goods and services of others, namely, the merchandise and apparel of others by [specify e.g. distributing discount cards, arranging for sponsors to affiliate their goods and services with disc golf] in International Class 035; entertainment services in the nature of providing services related to the disc golf industry, namely, [specify e.g. providing disc golf caddie services, disc golf club services etc.] in International Class 041.
If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Class 035 and 041. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq. Please see below for the requirements necessary to add an additional class.
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.
If an amendment to the recitation of services requires the addition of an International Class to the application, the applicant should note the following.
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the services in each class and list the services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.