UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/509366
APPLICANT: NATIONAL CHAMBER LITIGATION CENTER, INC.
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CORRESPONDENT ADDRESS: MARK C. COMTOIS DUANE MORRIS LLP 1667 K STREET, N.W., SUITE 700 WASHINGTON, DC 20006
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: NATIONAL CHAMBER LITIGATION CENTER, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: USC02 044
CORRESPONDENT EMAIL ADDRESS:
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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 76/509366
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
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.
The examining attorney refuses registration because the proposed mark is used solely as a trade name and not as a service mark(and the mark on the specimen differs from the mark on drawing and that issue is dealt with below). Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127. See In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41 (C.C.P.A. 1956); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 726 (TTAB 1984); TMEP §1202.01.
The examining attorney will reconsider this refusal if the applicant submits a substitute specimen showing use as a service mark. TMEP §904.11. 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 application filing date. 37 C.F.R. §2.59(a); TMEP §904.09.
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.
Disclaimer:
The applicant must disclaim the descriptive wording “NATIONAL” and “LITIGATION CENTER” 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 “national” goes to the scope of the services and “litigation center” goes to the purpose, function, or use and subject matter of applicant’s identified services. Registration No. 1,657,730, now cancelled, for the same mark for the same services, owned by applicant, shows the office position on the wording, LITIGATION CENTER.
Drawing
The drawing displays the mark as NATIONAL CHAMBER LITIGATION CENTER, INC. However, this differs from the display of the mark on the specimen, where it appears as NATIONAL CHAMBER LITIGATION CENTER. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i). The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(a); TMEP §807.14(a).
If a substitute specimen is submitted, 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) and 2.72(a); TMEP §904.09.
If a substitute specimen is submitted, “INC.” is disclaimable matter and required to be disclaimed.
Specimen
The specimen is unacceptable as evidence of actual service mark use because it does not “read on” the recited services, that is, association services. 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.
Fee Increase
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Richard A.Straser/
Trademark Examining Attorney
Law Office 114
(703) 308-9114, ext. 178;
www.ecom114@uspto.gov
fax no. (703) 746-8114
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.