UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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 applicant’s communication filed on December 6, 2004:

 

The amended disclaimer statement is acceptable and has been made of record.

 

Failure to Function Refusal—Maintained and made FINAL

For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127, for failure to function as a service mark as used on the specimen(s) of record. 

 

The proposed mark does not function as a service mark because the specimen submitted with the application 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 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.  As was the case with the original specimens, the specimens submitted show use of the mark in connection with a computer system or process.  According to the specimens, the DIAMOND RIM SYSTEM is an “automated quality control file review system” that allows users “to perform quality control participant file reviews”.  While the new specimens do refer to a “needs assessment protocol” and the development of a plan of action, these do not show use of the mark in connection with the services listed in the application, which are “business management consultation services” (see below regarding the applicant’s proposed identification amendment).

 

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.  A sample declaration is reproduced below.

 

Declaration

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 and the like may jeopardize the validity of the application or document 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)

 

Be sure to include somewhere in the response, or in the declaration reproduced above, one of the following statements (whichever is applicable):

 

1.      “The substitute specimen was in use in commerce at least as early as the filing date of the application” (to be used if the applicant submits a specimen showing use of the mark in commerce)

 

2.  “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. (to be used if the applicant amends to a Section 1(b) filing basis)

 

The applicant should also note the following:

 

Amended Identification Unacceptable

The proposed amendment to the identification cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing.  The application lists “business management consultation” in the recitation of services.  The applicant’s proposed amended identification is “business management consultation- providing quality assurance services in the field of file management for Federal, State and Local organizations”.  This amendment is unacceptable because “providing quality assurance services” are not within the scope of “business management consultation”.  Business management consultation refers to consulting services in the field of business management, which do not include quality assurance services.

 

While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, the amended identification is unacceptable, and the services of record are “business management consultation”.

 

 

Response

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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