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  76/583697

 

This letter responds to the applicant’s communication filed on October 19, 2004.

 

Refusal—Proposed Mark Does Not Function as a Service Mark

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 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 requirement that the applicant submit an acceptable specimen is therefore MAINTAINED and CONTINUED.

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the proposed mark in connection with the services listed in the application.  The application lists as services “business management consultation”.  However, according to the specimen, DIAMOND RIM SYSTEM and DESIGN identifies a computer program accessible online, where “authorized users can log into the system, enter tenant data, perform file reviews, and generate reports identifying and analyzing errors”.  Thus, as shown on the specimens, the mark identifies computer software available online, and not business management consultation services.  The specimen makes no mention of any business management consultation services.

 

The applicant must submit a specimen that shows how the applicant uses the mark in commerce in connection with the business management consultation services listed in the application.  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.

Substituting the Filing Basis

If the applicant cannot comply with the specimen requirement, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.  In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.

 

If the applicant amends to substitute a basis, the applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:

 

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.

 

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).  This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R, §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.

Disclaimer

In response to the examining attorney’s disclaimer requirement, the applicant has inserted a disclaimer statement that reads “No claim is made to the exclusive right to use RIM or system apart from the mark as shown”.

 

As indicated in the first Office Action, the terms in the applicant’s mark that must be disclaimed appear together and thus must be disclaimed as a unit, in the following format:

 

No claim is made to the exclusive right to use “RIM SYSTEM” apart from the mark as shown.

 

A disclaimer of the individual component words of a complete descriptive phrase is improper.  See, e.g., In re Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984); In re Surelock Mfg. Co., Inc., 125 USPQ 23, 24 (TTAB 1960).  This standard is applied strictly, and the disclaimer of individual words separately is generally appropriate only when the words being disclaimed are separated by registrable matter.  TMEP §1213.08(b).

 

The requirement that the applicant insert a correct disclaimer in MAINTAINED and CONTINUED.

Response Guidelines

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://eteas.gov.uspto.report/V2.0/oa211.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.

 

 

 

 

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430

(571) 273-9430 (Fax)

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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