To: | Kramer, David (nedhearnml@aol.com) |
Subject: | TRADEMARK APPLICATION NO. 76488074 - DJ DEVIOUS - 1318-00 |
Sent: | 8/5/03 1:56:24 PM |
Sent As: | ECom106 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/488074
APPLICANT: Kramer, David
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CORRESPONDENT ADDRESS: EDWARD R. HEARN, ESQ. LAW OFFICES OF EDWARD R. HEARN, P.C. 84 WEST SANTA CLARA STREET, SUITE 660 SAN JOSE, CA 95113
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: DJ DEVIOUS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1318-00
CORRESPONDENT EMAIL ADDRESS: nedhearnml@aol.com |
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 76/488074
The assigned examining attorney has reviewed the referenced application and determined the following.
The specimen is unacceptable as evidence of actual service mark use because they are record labels and so not considered advertising. The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §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 §§1301.04 et seq. 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.
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. §2.20; TMEP §904.09.
If any names other than that of the applicant appear on the specimens which indicate that another party may have ownership rights in the mark, the applicant must explain: (1) the relationship between the applicant and the party designated by that name, (2) whether that party has any rights in the mark, and (3) how the applicant controls any use of the mark by that party. Trademark Act Section 5, 15 U.S.C. §1055; 37 C.F.R. §2.38(c); TMEP §§1201.03 et seq. and 1201.04.
If the name shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name. If the name does not identify a living individual, the applicant should state so for the record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.
The applicant must disclaim the descriptive wording “DJ” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it tells the audience what type of performer applicant is.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use DJ apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
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. §1052(d). TMEP §704.02.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/dominick j. salemi/
Law Office 107
(703)308-9107 EX 164
ecomm107@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.