Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE OF THE PREVIOUS FINAL OFFICE ACTION. THE APPLICANT HAS UNTIL 08/07/05 TO RESPOND. 

 

 

Serial Number  76/577573

 

Introduction

 

This letter responds to the applicant’s communication filed on 4/7/05.

 

The substitute specimen is unacceptable and the final requirement is maintained.

 

Specimen

 

The specimen is unacceptable as evidence of actual service mark use because they appear to be labels.  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  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.

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). Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like. However, printer's proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not accepted because they do not show use of the mark by the applicant in the sale or advertising of the services. Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services. See

 

In Johnson Controls, Inc., 33 USPQ2d at 1320 (holding that labels attached to the packaging of valves did not show use of the mark for custom manufacturing of valves), the Board noted that the labels were not used in the rendering of the services, as the custom manufacturing services were complete before purchasers ever see the mark.  Such is the case here, as it appears that the labels will be seen by consumers after the distributorship services have been rendered to manufacturers.

 

 

 

/Howard B. Levine/

Examining Attorney

Law Office 115

(571) 272-9188

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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