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  76/509639

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Classification

 

The applicant has classified the goods incorrectly.  The applicant must amend the application to classify the goods in International Class 35.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Claim of Distinctiveness

 

The applicant states that the mark has become distinctive.  This statement is unnecessary because the mark appears to be inherently distinctive. Trademark Act Section 2(f), 15 U.S.C. §1052(f); TMEP §1212.02(d).  The applicant must either delete the statement from the application or explain why a claim of distinctiveness is necessary.

 

Specimens

The specimen does not show use of the mark for any services identified in the application.  The applicant must submit a specimen showing use of the mark for the services specified.  37 C.F.R. §2.56; TMEP §904.  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.

 

In this case, the applicant has identified its services as “Pharmacy, retail drug store and general merchandise store services.”  The applicant has provide specimens in the nature of a discount coupon for soft drinks.   The coupon does not demonstrate use of the mark in connection with pharmacy services.

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.  TMEP §§904.11 and 1301.02 et seq.  The examining attorney will reconsider this refusal if the applicant submits a specimen showing use of the mark in the sale or advertising of the services.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Search Clause

 

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.

 

 

 

 

 

/Julia Hardy Cofield/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 295

 

 

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.

 

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.