| To: | The Brix Group, Inc. (info@jet-law.com) |
| Subject: | TRADEMARK APPLICATION NO. 76546709 - STREAMER - Joel F. Dona |
| Sent: | 6/27/2007 3:51:11 PM |
| Sent As: | ECOM113@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/546709
MARK: STREAMER
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: The Brix Group, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 6/27/2007
The assigned trademark examining attorney reviewed the statement of use and determined the following:
The specimens of use submitted in support of applicant’s Class 9 goods are acceptable. The specimens submitted for Classes 35 and 42 are unacceptable for the reasons set forth below.
SUBSTITUTE SPECIMEN REQUIRED FOR CLASS 35 SERVICES
The Class 35 specimen is not acceptable because it does not show the applied-for mark used in connection with any of the Class 35 retail store or online retail store services specified in the statement of use. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b).
In the present case, the specimen that appears on page 5 of applicant’s statement of use references dealership services rather than retail store services. The brochure explains how one can “become a an American Wireless Satellite Radio Dealer.” See p. 5 of Statement of Use. “Retail store or online retail store services in the field of satellite radio” involve the sale of specific items related to satellite radio that one person can purchase from another. An acceptable specimen for retail store and online retail store services would depict the ability of one person to purchase such services from a specific retail outfit rather than solicit people to become certified to run satellite radio dealerships.
A service mark specimen must show use of the mark “in the sale or advertising of services.” 15 U.S.C. §1127; 37 C.F.R. §2.56. Indeed, “[w]hile the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). There must be sufficient reference to the services in the specimen to create this association. In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999); TMEP §§1301.04 et seq. Applicant’s Class 35 specimen fails to create this association because it discusses satellite radio dealership services rather than retail store and online retail store services in the field of satellite radio.
An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §2.34(a)(1)(iv).
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of goods and/or services in the statement of use; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of 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.
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.
MARK ON DRAWING AND SPECIMEN DIFFER FOR CLASS 42 SERVICES
The mark depicted on the drawing disagrees with the mark on the specimen for Class 42 that appears on page 6 of applicant’s statement of use. The mark on the drawing page must be a substantially exact representation of the mark that appears on the specimen. 37 C.F.R. §2.51.
In this case, the drawing displays the mark as the word “streamer” with a curved line above it. The mark on the Class 42 specimen appears on the photographs of the receiver and transmitter depicted on the subscription service brochure and consists solely of the word “steamer.” The curved line above the word does not appear. See p. 6 of statement of use. Therefore, the mark does not match the mark in the drawing.
Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered; in other words, the mark on the specimen creates a different commercial impression from the mark on the drawing. 37 C.F.R. §2.72(b); TMEP §§807.14 et seq.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark that appears on the drawing; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.
PARTIAL ABANDONMENT
If applicant should fail to respond to this Office action within the six month time limit, then Classes 35 and 42 will be deleted from the application and the application will proceed forward for Class 9 only. 37 C.F.R. §2.65(a).
If applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned trademark examining attorney directly at the number below.
/Megan K. Whitney/
Trademark Examining Attorney
Law Office 113
Phone: (571) 272-8954
Fax: (571) 273-8954
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.