Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/561458

 

The following issues were discussed in communication with Mark Harrison on July 20, 2004.

Signature Required

The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application.

 

The applicant must submit one of the following additional statements with its substitute declaration:

 

For a Section 1(a) basis, “The mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.”

 

For a Section 1(b), 44(d), or 44(e) basis, “The applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.”  See Exam Guide 3-99, page 4, and 37 CFR Sections 2.34(a)(1)(i), (a)(2)(i), (a)(3)(i) and (a)(4)(i).

 

No Basis Indicated

The applicant has not indicated the basis for the application.  An application may be filed based on any of the following:

 

(1)  use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

 

(2)  a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

 

(3)  a claim of priority, based on an earlier‑filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));

 

(4)  registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)). 

 

The applicant must specify at least one basis for filing and the applicant must submit all of the requirements for the basis asserted.  TMEP §806.  Depending on the circumstances, the applicant may be entitled to assert more than one basis for filing.  In such a case, the applicant must:  (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. §2.34; TMEP §§806.02 et seq.

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

To base the application on the applicant’s use of the mark in commerce the applicant must submit the following:

 

(1)  A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;

 

(2)  The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;

 

(3)  The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and

 

(4)  One specimen for each class, showing how the applicant actually uses the mark in commerce.  If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date.

 

These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).

 

For an application based on a foreign registration, the applicant must submit:

 

(1)  A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002 et seq. and 1004.01 et seq.

 

(2)  An English translation if the foreign certificate of registration is not written in English.  The translator should sign the translation.  TMEP §1004.01(b). 

 

(3)  The following statement:  “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services since the application filing date.”  The statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.

 

Trademark Act Section 44(e), 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3);  TMEP §806.01(d).

 

The applicant may claim more than one basis, provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §§806.02 et seq.

 

The applicant may allege different bases for different classes, and may also allege different bases as to goods or services within a class.  However, if the applicant chooses to assert different bases in the same application, the applicant must clearly indicate that it is claiming more than one basis, and must separately list each basis, followed by the goods or services to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

703-308-9103, ext. 126

jim.griffin@uspto.gov

(unofficial communications only)

 

 

 

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