To: | Ming, Yao (bkuenzinger@bhsmck.com) |
Subject: | TRADEMARK APPLICATION NO. 76518769 - YAO MING - N/A |
Sent: | 11/26/2004 4:07:38 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/518769
APPLICANT: Ming, Yao
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CORRESPONDENT ADDRESS: BROWN, HALL, SHORE & MCKINLEY, LLP |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: YAO MING
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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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Serial Number 76/518769
This letter responds to the applicant's communication filed on August 26, 2004.
The applicant has clarified the date of first use anywhere and provided a substitute specimen. The clarification of the date of first use anywhere is acceptable.
The requirement for an acceptable substitute specimen is maintained and made FINAL.
SPECIMEN---FINAL
The specimen is unacceptable as evidence of actual service mark use because it is merely advertising for trading cards and does not show use of the mark in connection with the relevant services, i.e., “entertainment in the nature of live competitions in the field of athletics; Entertainment services, namely personal appearances by a sports celebrity.” 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.
The only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Commissioner if permitted by 37 C.F.R. Section 2.63(b). 37 C.F.R. Section 2.64(a). Regarding petitions to the Commissioner, see 37 C.F.R. Section 2.146; TMEP sections 1702 and 1704. If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. 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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
Scott Baldwin /sb/
Trademark Attorney
Law Office 112
571-272-9398
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.