UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/525586
APPLICANT: Project Skateboard Hardware, Inc.
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CORRESPONDENT ADDRESS: RICHARD J. SCHWARZSTEIN 1151 DOVE STREET, SUITE 130 NEWPORT BEACH, CALIFORNIA 92660
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
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MARK: PROJECT
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/525586
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. Nevertheless, the applicant must respond to the following issues.
The applicant must indicate whether the term “project” has any significance in the relevant trade or as applied to the relevant goods, 37 C.F.R. §2.61(b). The applicant is advised that if the term has any such descriptive meaning, a 2(e)(1) descriptiveness refusal will issue.
The identification of goods and/or services is unacceptable as indefinite. Moreover, the items listed identify goods and/or services that may be properly classified into more than one international class. Therefore, the applicant may amend the identification to substitute any or all of the following if accurate:
International Class 8; Skateboard repair kits primarily consisting of hand operated tools, comprising the following: wrenches, allen wrenches, phillips screwdrivers, couplers, extensions, utility knives and razor blade holders, nuts and bolts, screws, nails, washers, ratchet handles, ratchet wrenches, sockets, bearings, openers, pads to tighten parts, hammers, pliers, gauges, fasteners, staples and staplers;
International Class 35; Retail stores featuring skateboard repair kits; Mail order catalog services featuring skateboard repair kits; On-line retail store services featuring skateboard repair kits;
To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the PTO website at http://www.uspto.gov under the heading Trademark Manuals in the Trademark index page.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or services set forth in the present identification.
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods and/or services in each class and list the goods by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
The specimen does not show use of the mark for any goods/services identified in the application. It is unclear whether the applicant is seeking registration for goods or services of both, so the acceptability of the specimens is discussed below as to both goods and services.
Goods. The specimen (showing the mark on packaging for the goods) shows the mark used on a single item, risers, and not on tool kits. The applicant must submit a specimen showing use of the mark for the goods/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.
To the extent the mark appears in the catalog specimen elsewhere, the specimen is further unacceptable as evidence of actual trademark for goods use because in the nature of advertising and promotional material. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). 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 tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 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.
Services. The specimen is unacceptable as evidence of actual service mark use for class 35 services because it does not show use of the service mark in relation to the identified services. The specimen of use does not show retail store services or mail order catalog services. While applicant indicates that the specimen is a catalog page, the specimen is not complete enough to support catalog services. It is not clear form the specimen that it is in fact a catalog because there is no ordering information or catalog cover, and it is not clear whether the mark as it appears identifies catalog services, as opposed to the specific goods contained therein. The applicant may provide supplemental catalog pages to support catalog services and supplemental specimens of this nature need not be supported by a declaration. Alternatively, 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.
A specimen is unacceptable if it does not show use of the service mark in relation to the identified service. Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). The specimen must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); TMEP §§1301.04 et seq. Therefore, the specimen must show the mark in reference to the particular services identified.
Please feel free to contact the undersigned attorney if you wish to discuss this application.
/John S. Yard/
Trademark Examining Attorney
Law Office 115
(703) 308-9115 x209
ecom115@uspto.gov
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.