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  76/497763

 

This letter responds to the applicant's communication filed on July 20, 2004.  The applicant amended the identification of goods/services, paid for the additional class, and the fee for an additional use basis, and submitted additional specimens, which amendments are acceptable and made of record.  The Amendment to Allege Use is accepted as to Classes 9 and 42, but dates of use are required for Classes 35 and 37 as noted below.

 

As discussed over the telephone with applicant’s attorney, it appears the applicant has overpaid the fees by $225.

 

The refusals based on Trademark Act §2(d) and the potential refusals based on Trademark Act §2(d) are all withdrawn.  The refusal based on the recitation of services in Class 37 is withdrawn.

 

For the reasons below, the refusal based on the requirement for dates of use for Classes 35 and 37 is maintained and made FINAL.

 

Dates of Use Omitted for Classes 35 and 37

Applicant must specify the date of first use of the mark anywhere and the date of first use of the mark in commerce for the services in Classes 35 and 37, and verify these dates of use with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

The amendment to allege use and the response of July 20, 2004 omit these required dates of first use of the mark.  Trademark Act Sections 1(a)(2) and (c), 15 U.S.C. §§1051(a)(2) and (c); 37 C.F.R. §2.76(b)(l); TMEP §§903 et seq. and 1104.09(d).  Both a date of first use anywhere and a date of first use in commerce must be provided even if they are the same date.  TMEP §903.04.

 

Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a).  37 C.F.R. §2.20.

 

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 and the like may jeopardize the validity of the application or document 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)

 

THIS REFUSAL APPLIES TO CLASS(ES) 35 and 37 ONLY

If applicant should fail to respond to this Office action within the six month time limit, then Class(es) 35 and 37 will be deleted from the application and the application will proceed forward for Class(es) 9 and 42 only.  37 C.F.R. §2.65(a).

 

Conclusion

For these reasons the refusal based on the requirement for dates of use for Classes 35 and 37  is made FINAL.

 

Options

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

To reach the undersigned attorney by telephone after October 19, 2004, please call (571) 272 - 9274. To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.  Thank you.

 

/M. Catherine Faint/

Trademark Attorney

Law Office 103

phone: (703) 308-9103 x225

fax: (703) 746-6158

 

 

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 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.