UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/507603
APPLICANT: PFPC Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: IMPRESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/507603 – IMPRESS
The applicant’s letter filed November 15, 2004, is an incomplete response to the Final Action dated May 17, 2004, because of the reasons outlined below. Because this omission appears to be inadvertent, the applicant may complete its response either within thirty days of the mailing date of this letter or within the time remaining in the response period of the last Office action, whichever is longer. 37 C.F.R. §2.65(b). See TMEP §718.03(b).
The applicant must submit: (1) one substitute specimen per class showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimens were in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
The following is a properly worded declaration under 37 C.F.R. §2.20. If a declaration under 37 C.F.R. §2.20 is required based on the amendments made to the application, the applicant should insert this declaration at the end of the response signed by a person authorized to sign under 37 C.F.R. §2.33(a).
The substitute specimens were in use in commerce 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 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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
The current specimens of record comprise product marketing data sheets and are unacceptable as evidence of actual service mark use because they appear to show use of the mark on goods and no in connection with the sale or advertising of services. Specifically, the current specimens appear to show use of the mark on computer desktop products. Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
The Final requirement for acceptable specimens is maintained and continued.
If the applicant cannot comply with the requirement for an acceptable specimen for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis. To do so, 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.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1). The following is a properly worded declaration under 37 C.F.R. §2.20. If this declaration is needed based on the amendments made to the application, the applicant should insert this declaration at the end of the response signed by a person authorized to sign under 37 C.F.R. §2.33(a).
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. 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 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.
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(Signature)
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(Print or Type Name & Position)
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(Date)
Telephone For Assistance
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Alicia P. Collins/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 115
(571) 272-9147
(571) 273-9147 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.