UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The assigned trademark examining attorney has reviewed the statement of use and has determined the following:

 

Registration Refused – Mark Does Not Show Use as Trademark with Services

 

Registration is refused because the proposed mark, as used on the specimen of record, is merely informational matter and is not being used as a service mark to indicate the source of the services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053 and 1127; In re The Signal Cos., 228 USPQ 956 (TTAB 1986); TMEP §1301.02(a).

 

Altered forms of the mark, appears twice on the specimen.  On the left side of the specimen, the proposed mark appears with design elements added and is not a substantially exact representation of the mark as shown on the drawing page.  Further, the placement and use of this altered form of the mark does not appear to function as a service mark, but rather as information matter concerning features of the oven.  The proposed mark also appears in the text on the right side of the specimen, but the text is broken up with commas, and includes the word “and” between the words “cool”, “connect, “cook and is not, therefore, a substantially exact representation of the proposed mark.  Further, the manner in which the mark is used in the text material, as displayed on the specimen, is merely informational as to the features of the oven and does not function as a service mark for the identified services. 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the statement of use.  A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b). 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of goods and/or services in the statement of use; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like 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 registration resulting there from, declares that the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use; 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)

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

 

 

/bluken/

Bonnie Luken

Trademark Examining Attorney

Law Office 107

Phone (571) 272 8807

Fax (571) 273 9107

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.