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  76/527298

 

This Office action responds to the applicant’s correspondence received 5/3/04. Upon review of the substitute specimen of use, the examining attorney notes the following:

 

The applicant responded with substitute specimens that use the proposed mark, but again, not for the identified services [association services, namely, promoting the interests of people with spina bifida]. Accordingly, the requirement to submit acceptable specimens of use for the identified services is maintained and FINAL.

 

Specimen Unacceptable for Services – FINAL

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was 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.

 

In its response to the requirement to submit an acceptable substitute specimen, the applicant submitted various pages and articles from its newsletter, an annual report, and an exhibitor’s prospectus. 

The original specimen of use comprised a newsletter of the applicant entitled Insights Into Spina Bifida.

 

Each of the submitted substitute specimens [Exhibits A-AA] references Insights, the applicant’s newsletter. The applicant’s submitted specimens are unacceptable as evidence of proper service mark use because they fail to show use of the proposed mark in connection with the identified services [association services, namely, promoting the interests of people with spina bifida].

 

A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application. 37 C.F.R. §2.56(b)(2). 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.

 

Accordingly, the examining attorney continues and maintains the FINAL refusal regarding acceptable substitute specimens of use.

 

Options

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  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).

 

 

/R.L.F./

Ronald L. Fairbanks

Trademark Attorney

Law Office 112

(703)308-9112 ext. 137

 

 

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 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.