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  76/538517

 

This letter responds to the Applicant's communication filed on April 22, 2004.  The amended recitation of services is acceptable for International Classes 016, 018, 025, 028, 035, 036, 039, 044, and 045.   The amended recitations of services is not acceptable for International Classes 041 and  043.   The Applicant submitted a fee of $ 335.00 to add International Class 012 and a specimen, both which are acceptable.

 

REFUSAL - Proposed Mark Does Not Function as a Service Mark

THIS REFUSAL APPLIES TO INTERNATIONAL CLASS 036 ONLY

 

The examining attorney refuses registration because the proposed mark does not function as a service mark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  The proposed mark neither identifies and distinguishes the services of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§ 1301.02 and 1301.02(d).  Please note that the proposed mark does not function as a service mark because the specimen submitted with the application is unacceptable as evidence of actual service mark use; therefore, the proposed mark cannot identify and distinguish the applicant's services from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the proposed mark in connection with services.  The specimen is merely an advertising for a web-based pay and compensation calculator.  There is no reference information in the field of retirement planning, financial assistance, financial data, loan availability and qualification, investment opportunities and insurance for others, via the Internet as recited in the application.  The applicant must submit a specimen that shows how the applicant uses the mark in commerce with the services.  A mark is deemed to be used in commerce “on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce....” Trademark Act Section 45, 15 U.S.C. §1127. 

 

The applicant must demonstrate how the mark is used with the services by submitting an acceptable specimen.  In re Restonic Corp., 189 USPQ 248 (TTAB 1975); 37 C.F.R. §2.56; TMEP §§1301.04 et seq. 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.

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a service mark.

 

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.

Informalities

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Recitation of Services Indefinite in International Class 041

The wording “educational and training opportunities” in the recitation of services needs clarification because it is indefinite and the subject must be stated, e.g., educational and training opportunities in teaching.  The wording, “amusement activities” is indefinite and the specific activity must be described using the common commercial name, e.g., “amusement activities, namely magic shows.”  TMEP §1402.01.  The Examining Attorney suggests the following, if accurate:

 

International Class 041 Providing information in the field of educational and training opportunities namely (describe the subject area, e.g., teaching), career counseling and library resources for others via the Internet; entertainment in the nature of an amusement park ride for other via the Internet; providing entertainment information for others, namely recreational resources, sporting activities, fitness resources, and amusement activities, namely (describe the activities using common commercial names, e.g.,  magic shows) via the Internet

Recitation of Services in International Class 043

The wording “recreational resources, sporting activities, fitness resources, entertainment activities and amusement activities” in the recitation of services needs clarification because it is too broad and belongs in International Class 041.   TMEP §§1402.01 and 1402.03.

 

International Class 043 Providing information in the field of temporary lodging services; restaurant and catering services, and child care services, for others via the Internet

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Please also note that the use of parenthesis or brackets in the identification format suggestion is merely for organizational purposes.  The parenthesis or brackets should be removed from the actual identification adopted and provided by applicant in the response.

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Odessa Bibbins

/Odessa Bibbins/

Trademark Attorney

Law Office 113

Telephone: (703) 308-9113 x 475

Fax: (703) 746-8113 

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.