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  76/576989

 

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

NO CONFLICTING MARKS

 

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 1105.01.

 

STANDARD CHARACTER DRAWING STATEMENT IS NEEDED

 

The requirements for a standard character drawing submitted on paper are as follows:

 

·        a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);

 

·         one of the shorter sides of the sheet should be regarded as its top edge;

 

·        include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a) and 2.54; See TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

Applicant must submit the following standard character claim:   “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

RECITATION OF SERVICES - INDEFINITE

 

The wording in the recitation of services is unacceptable as indefinite because it is unclear what the applicant means by “a recording and performing…” The examining attorney suggests that the applicant amend its recitation to read with greater specificity. The applicant must amend the recitation to specify the common commercial name of the services. If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.  TMEP section 1301.05.  The following amendments are suggested, if accurate:

 

“Entertainment services in the nature of visual and audio performances, namely, musical band performances, in International Class 41” or

 

“Entertainment in the nature of live musical group, in International Class 41.”

 

Please note that if the applicant amends its recitation to include services in more then one class, then, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01. 

 

INCLUDE ONLY SERVICES THAT ARE WITHIN THE SCOPE OF THE ORIGINAL RECITATION

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

NEW SPECIMEN SUPPORTED BY A DECLARATION IS REQUIRED

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use in connection with any services and it is nothing more than a representation of the applicant’s mark on a blank sheet of paper.  The applicant must submit one specimen showing the mark as it is used in commerce.  37 C.F.R Section 2.58.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP section 1301.04.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 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. Section 2.59(a); TMEP section 905.10.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. 

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

                        _____________________________                                  

                                    (Signature)

 

                        _____________________________

                        (Print or Type Name and Position)

 

                        _____________________________

                                                                        (Date)

INFORMALITIES

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.

 

NOTE FOR ELECTRONIC RESPONSES

 

Any communications regarding pending applications sent via e-mail to any of the law office e-mail addresses must:

 

(1)  be in English;

(2)            include the entire response as e-mail text, not as an attachment;

(3)  list the serial number in the "Subject" line; and

(4)  include any specimens or evidence in jpg or gif format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format.  Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted. 

 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol.  Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised.  Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

NOTE REGARDING  TIMELY FILING OF RESPONSES

 

The statutory period for response to an Office action during examination is six months.  15 U.S.C. §1062(b).  The examining attorney does not have any discretion to shorten or extend such period. 

 

The crucial date for the response is the date it is received by the Office, not the date it is mailed by the applicant.  The applicant should see 37 C.F.R. §§1.8 and 1.10; TMEP §§702.02, 702.03 and 702.04(f), regarding certificate of mailing, certificate of transmission and "Express Mail" procedures to avoid lateness.

 

NOTE REGARDING STATUS OF APPLICATION

 

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

FBlandu

Trademark Attorney

/florentina blandu/

l.0.112

tel (703) 308-9112 ext. 104

fax (703) 872-9173

florentina.blandu@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 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.