UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY 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.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. 

 

OFFICE RECORDS SEARCH:  The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

ADVISORY – AMENDMENTS TO GOODS/SERVICES:  If the identification of goods and/or services has been amended below, any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number 76/597348

 

EXAMINER'S AMENDMENT

 

AMENDMENT(S) AUTHORIZED:  As authorized by BRUCE GROGE on July 12, 2005, the application is amended as noted below.  If applicant disagrees with or objects to any of the amendments below, please notify the undersigned trademark examining attorney immediately.  Otherwise, no response is necessary.  TMEP §707.   

 

International Class 009: Software used in the broadcast industry featuring digital automation, programming, and scheduling for the purpose of administering, operating and managing radio and television facilities.

 

 

International Class 042: Technical support services, namely, troubleshooting of software problems for software used in the broadcast industry featuring digital automation, programming, and scheduling for the purpose of administering, operating and managing radio and television facilities; Installation of computer software used in the broadcast industry featuring digital automation, programming, and scheduling for the purpose of administering, operating and managing radio and television facilities.

 

Claim of Ownership of Prior Registrations

The applicant is the owner of U.S. Registration Nos. 1780086, 2291335 and others.

 

Disclaimer

No claim is made to the exclusive right to use SOUND SOFTWARE apart from the mark as shown

 

 

PRIORITY ACTION

 

Applicant must respond to each refusal and/or requirement raised below.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling.  TMEP §§708.01 and 708.05.

 

The applicant’s claim of basis 1(a) is defective.  The applicant has not submitted a statement claiming the mark has been in use in commerce, nor have dates of use been submitted.

 

Filing Basis -  Requirements Based on §1(a)

To base the application on the applicant’s use of the mark in commerce the applicant must submit the following:

 

(1)  A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;

 

(2)  The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;

 

(3)  The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and

 

(4)  One specimen for each class, showing how the applicant actually uses the mark in commerce.  If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date.

 

These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

Specimen

Applicant will submit a substitute specimen showing use of the mark for the goods and/or services specified in the application; because the specimen currently of record does not show use of the mark for any goods and/or services identified in the application.  37 C.F.R. §2.56; TMEP §904.  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The current specimen of record comprises a piece of paper merely showing the proposed mark..  It does not show use for applicant’s goods and/or services.

 

Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in the sale or advertising of its services) showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Examples of acceptable 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.

 

Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in commerce for the goods listed in the application) showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Examples of acceptable 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.

 

If applicant submits a response via electronic means, please note that the substitute specimen must be a digitized image submitted in .jpg format.  37 C.F.R. §2.56(d)(4).

 

/Ysa de Jesus/

Law Office 114

YSA.DEJESUS@USPTO.GOV

(571) 272 9449

 

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