UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE 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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/612172

 

The assigned trademark examining attorney has reviewed the Statement of Use and has determined the following:

 

REFUSAL – SPECIMEN NOT ACCEPTABLE

 

Applicant must submit a specimen showing use of the mark for the goods specified in the application, because the specimen currently of record does not show use of the mark for the goods identified.  37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b).  For a trademark application under §1(a) of the Trademark Act, or an amendment to allege use or statement of use in an application under §1(b) of the Act, the specimen must show the mark as it is used on or in connection with the goods in commerce.  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. 

 

In the present case, the goods are identified as a “computer program for processing applications and hiring candidates in the human resources field.”  Although the current specimen of record shows the proposed mark, it is not acceptable because it consists of advertising material that shows the mark being used as a service mark in connection with services in the nature of providing temporary use of non-downloadable computer software, rather than as a trademark that is used on goods in the nature of computer programs.

 

Therefore, applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the identified goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use,” 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 §§904.01 et seq. and 904.09.

 

Pending an adequate response to the above, registration is REFUSED because the specimen of record does not show use of the proposed mark as a trademark for the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.

 

The following substitute specimen statement is provided for applicant’s convenience:

 

Substitute Specimen Statement

 

 

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 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)

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

Applicant is advised that, once a statement of use has been filed, it cannot be withdrawn even if the Office determines that the statement of use does not comply with the minimum filing requirements.  37 C.F.R. §2.88(g); TMEP §1109.17; In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993).

 

APPLICANT’S RIGHT TO RESPOND

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

 

 

If applicant has any questions, please feel free to contact the undersigned examining attorney.

 

 

/Robert J. Lavache/

Examining Attorney

Law Office 108

Phone: 571-272-5881

Official Fax: 571-273-9108

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.