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  76/480828

 

This letter shall supercede the office action of November 24, 2003.  The applicant must respond to this Office Action within 6 months from the date of this action in order to avoid abandonment.

 

This letter responds to the applicant's communication filed on June 4, 2003. 

 

non-final action

 

In the first office action dated March 24, 2003, the examining attorney required the applicant to submit:  1) an acceptable specimen;  2) acceptable dates of use clauses; 3) a statement that the applicant is not using the mark; 4) certification standards and 5) a disclaimer.

 

In its response, the applicant complied with all of the requirements, except that for an acceptable substitute specimen.  The applicant’s other submissions are accepted and made of record. 

 

This is a non-final action.

 

Registration is Denied –Specimen Does not Show Certification

 

The substitute specimen consists of a poster displayed in member hospitals.  The poster is entitled “THE TEN STEPS TO BECOMING A BABY-FRIENDLY HOSPITAL.”  The terms “TEN STEPS” and “BABY-FRIENDLY HOSPITAL” appear in the same font and point-size.  The text underneath that heading is “Every facility providing maternity services and care for newborn infants should . . . “ and continues to list ten recommendations/requirements.

 

The specimen is not acceptable because it does not show that the mark is used to certify anything.  No one without prior knowledge would look at the poster and identify the term “Baby-Friendly Hospital” as a certification mark.  At most, the mark appears to be a slogan; however, as depicted in the specimen, it is not a certification mark. 

 

The applicant must submit a substitute specimen showing certification mark use by parties authorized by the applicant to use the mark.  37 C.F.R. §2.56(b)(5); TMEP §1306.06(c).

 

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.

 

For the applicant’s convenience, the following is a properly worded declaration under 37 C.F.R. Section 2.20:

 

The substitute specimen was in use in commerce by parties authorized by the applicant at least as early as the filing date of the application.

 

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 document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________                          _____________________________

            (Signature)                                                                             (Date)

                                                                 

 

_____________________________                         

(Print or Type Name and Position/Title)                                    

 

Applicant May Substitute Basis

 

If the applicant cannot comply with the requirement for a substitute specimen for the 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.

 

In this case, the applicant may wish to amend the application to assert an Intent-to-Use 1(b) basis.

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Gwen P. Stokols/

Trademark Examining Attorney

Law Office 102

 

Telephone:  703-308-9102, x. 275

Fax:  703-746-8102

 

 

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.