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  76/480229

 

The assigned examining attorney has reviewed the statement of use filed on 12/5/03 and has determined the following.

 

The examining attorney refuses registration because the proposed mark does not function as a service mark to identify and distinguish the applicant’s services from those of others and to indicate their source.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §1301.02(b).  Specifically, the proposed mark does not function as a service mark because it merely identifies a character.  In re Hechinger Investment Co. of Delaware, Inc., 24 USPQ2d 1057 (TTAB 1992); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980).

 

The applied for mark consists of the wording “HEMO PHIL A SAURUS.” The specimen indicates that HEMO PHIL A SAURUS is the name of a dinosaur character which appears only as a decorative element and not as a service mark for the medical services.   The examining attorney will reconsider this refusal if the applicant submits a substitute specimen showing use as a service mark.  TMEP §904.11.  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 prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §2.59(b); 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)

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.

 

 

 

 

 

/John E. Michos/

Trademark Attorney

Law Office 105

703 308-9105 ext. 152

703 872-9825 (fax)

ecom.105@uspto.gov

 

 

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.