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  76/602288

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

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.

 

Standard Character Claim

Applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

Specimens Not Acceptable for Goods

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) 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. §§2.56 and 2.59(a); TMEP §904.09.

 

The current specimen of record comprises advertising and is unacceptable as evidence of actual trademark use because it does not show use of the mark on the goods or on packaging for the goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.

 

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.

 

Identification and Classification of Goods Unacceptable

The wording “self-hypnosis and self-help instructional materials” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of each item of the goods.  If there is no common commercial name for the product, the applicant must describe the product in detail and its intended uses. TMEP section 804.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Applicant may adopt the following identification of goods, if accurate: 

 

Class 9:  Series of compact discs featuring audio recordings of instructional materials  in the fields of self-hypnosis and self-help

 

Class 16:  Series of non-fiction books featuring instructional materials in the fields of self-hypnosis and self-help

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

Insufficient Application Fees - Submit Additional Fee(s) or Restrict the Number of Classes

Applicant must clarify the number of classes for which it is applying.  As detailed above, the application identifies goods that may be classified in two classes; however, the fees submitted are sufficient to cover one class only. 

 

Applicant must either:  (1) restrict the application to the one class covered by the fee already paid, or (2) submit the fee for one additional class. 

 

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 to cover the fees for the remaining class.  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 to cover the fees for the remaining class.  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

(1)       $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)       $375 per class, when the fees are submitted with a paper response. 

 

Consolidated Appropriations Act, 2005, Pub. L. 108-447.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)     Applicant must list the goods/services by international class with the classes listed in ascending numerical order. 

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid, as well as the $100 fee per class for the amendment to allege use; and

 

(3)     For each additional class, applicant must submit:

 

(a)     dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use both anywhere and in commerce must be at least as early as the filing date of the amendment to allege use;

 

(b)    one specimen showing use of the mark for each class of goods and/or services; the specimen having been in use in commerce prior to the filing of the amendment to allege use;

 

(c)     a statement that “the mark was in use in commerce prior to the filing of the amendment to allege use, as evidenced by the attached specimen” and specifying the goods and/or services on which applicant is now using the mark in commerce; and

 

(a)     verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), 2.76(b), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen of record is not acceptable.

 

SAMPLE DECLARATION IN SUPPORT OF ADDITIONAL SPECIMEN(S) – USE BASIS

The following is a statement supporting use of the additional specimen(s) and a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. 2.33(a).

 

The additional specimen(s) was/were in use in commerce at least as early as the filing date of the application.  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 may jeopardize the validity of the application 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: /_____________________________/

(Electronic signatures submitted via e-mail must appear between forward slashes.)

 

Name and Position:  _____________________________

 

Date:                  _____________________________

 

Substituting a basis

If the applicant cannot comply with the requirement for a specimen of use for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.

 

In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.

 

To assert a Section 1(b) basis, the applicant must submit the following statement:

 

The 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. Section 1051(b).  This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20.  Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/John M. C. Kelly/

Trademark Attorney

USPTO - Trademark Law Office 112

571.272.9412

Fax: 571.273-9112 (official responses only)

 

 

 

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 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.