Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 POST REGISTRATION OFFICE ACTION

Registration Number  2873617

The Section 8 Affidavit, filed on August 28, 2009, is not accepted for the reason set forth below.

SPECIMEN

The owner must submit (1) a substitute specimen showing current use of the registered mark on or in connection with the services in the registration, and (2) a statement that the substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.161(g)(1); TMEP §1604.12(c).

The specimen of record is unacceptable to show service mark use because it does not reference the services.  Where a mark is used in advertising the services, the specimen must show an association between the mark and the services in the registration.  A specimen that shows only the mark, with no reference to the services either on the specimen or in descriptive wording in the mark, does not show service mark usage.  See In re Adair, 45 USPQ2d 1211 (TTAB 1997); TMEP §§1301.04(b) and (c).

Examples of acceptable specimens for services include signs, brochures, or advertisements that show the mark used in the sale or advertising of the services.  TMEP §1301.04 et seq.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:

The owner was using the mark in commerce on or in connection with the services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 6-year Section 8, that is, between the 5^th and 6^th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062.

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 statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

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Date

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 6^th year anniversary date on August 17, 2010, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16 and 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION:  A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after August 17, 2010.  37 C.F.R. §§2.6 and 2.164(a)(1).

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

/DNewton/

Dana L. Newton

Trademark Specialist

Post Registration Division

571-272-9544

571-273-9544-fax

Dana.Newton@uspto.gov

How to respond to this Office Action:

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the registration number, the words 'Post Registration' and the examiner'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 INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.