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  76/480829

 

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

 

Specimen does not Show Use in Connection with Certification Mark

 

The applicant has submitted a specimen that is unacceptable because it is not an example of use of the mark by parties the applicant certifies.  Instead, it shows use by the applicant itself. The applicant must submit a substitute specimen showing use of the mark by parties the applicant certifies.  37 C.F.R. §2.56(b)(5); TMEP §§1306.01(a) and 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 others 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 any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to exercise control over such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and 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)                                    

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.  The proposed mark neither identifies and distinguishes the services of the applicant from those of others nor indicates their source.  TMEP §§ 1301.02 and 1301.02(d). 

 

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 issues.

 

Dates of Use Must Refer to Use by Others

 

The dates‑of‑use clause refers to use by the applicant rather than the parties authorized to use the certification mark.  A certification mark is not used by the applicant.  The applicant must amend the dates‑of‑use clause to refer to use by the parties authorized by the applicant to use the mark. TMEP §§1306.01(a) and 1306.06(g)(iv).  The applicant must verify this amendment with an affidavit or declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

Mark not Used by Applicant

 

The applicant must submit a statement that “the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied.”  Trademark Act Section 4, 15 U.S.C. §1054; 37 C.F.R. §2.45; TMEP §1306.06(g)(v).

 

Certification Standards

 

The applicant must submit a copy of the standards used to determine whether others may use the certification mark with their goods or services.  37 C.F.R. §2.45; TMEP §1306.06(g)(ii).

Fee Increase Effective January 1, 2003

 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

No Likelihood of Confusion

 

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. Section 1052(d).  TMEP section 704.01.

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

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.

 

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

 

Gwen P. Stokols

 

 

 

 

 

/Gwen P. Stokols/

Trademark Examining Attorney

Law Office 113

 

Telephone:  703-308-9113, x. 275

Fax:  703-746-8113

 

 

 

 

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.