UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/476532

 

This letter responds to the applicant's communication filed on May 16, 2005.

 

Failure to Function as a Mark-Services

The examining attorney refuses registration because the proposed mark does not function as a trademark for the referenced services.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  This refusal is continued and made FINAL.  Because the mark is not used properly in connection with the services in trade [see specimen requirement below], the proposed mark neither identifies the services of the applicant nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.

 

The examining attorney will reconsider this refusal if the  applicant submits substitute specimens showing use of the proposed mark as a trademark for the referenced services.  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 prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. Section 2.59(b); TMEP section 904.09.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Specimen

The original specimen is unacceptable as evidence of actual service mark use because it is a mere press release, which are not acceptable (they are not advertisements which are in commerce).   Applicant’s argument that the press release is acceptable for one class of consumers but not the other is not convincing.  It is a press release regardless of who is viewing the specimen.  The substitute specimens are not acceptable because they show use with goods and not with applicant’s services.  As noted in the previous office action, the specimens must show use in connection with applicant’s services, and not in connection with applicant’s goods.  Note also that applicant has not provided the supporting declaration for these specimens, as required.  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R Sections 2.56 and 2.88(b)(2).  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 prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. Section 2.59(b); TMEP section 904.09. 

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.71(c); TMEP section 903.05.

 Note: An acceptable declaration of use would read as follows:

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.   

 

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)

 

 

This requirement is continued and made FINAL. 

 

Proper Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  If the applicant has questions regarding the status of the application, the applicant should check the USPTO.GOV website.

 

 

 

 

 

/Rebecca L. Gilbert/

Trademark Attorney

Law Office 113

571-272-9431

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.