UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/612204
APPLICANT: JONATHAN SCHWARTZ
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CORRESPONDENT ADDRESS:
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Commissioner for TrademarksP.O. Box 1451 Alexandria, VA 22313-1451
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MARK: GOOMBA GURU OF NEGATIVITY MANAGEMENT
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 goods and/or services have 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 76/612204
AMENDMENT(S) AUTHORIZED: As authorized by Mr. Johnson on April 28, 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.
The mark is presented in standard characters without claim to any particular font style, size, or color.
The applicant is Eric Johnson, a citizen of the United States, d/b/a BACCHUS PRODUCTIONS, a sole proprietorship organized under the laws of the state of Georgia.
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 identification of goods and services is unacceptable because it is indefinite. In particular, the applicant lists goods in more than the two paid international classes. In addition, greater specificity is required for “teaching materials” and the “live and videotape presentations.” Further, the applicant must avoid the use of brackets within an identification because information contained therein may be deleted during Office processing. The applicant may want to review the Acceptable Identification of Goods and Services Manual available in a searchable format free of charge at the USPTO website, http://www.gov.uspto.report/web/offices/tac/doc/gsmanual. The applicant may adopt two of the following identifications, if accurate:
International class 9 – prerecorded educational instructional videotapes and audiotapes for businesses and organizations in the areas of negotiations, sales, and business development.
Or
International class 16- instructional books, and printed teaching materials for education of businesses and organizations in the areas of negotiations, sales, and business development.
Or
International class 41 – educational services, namely live and videotaped seminars and workshops presenting skill-based instruction for sales-driven businesses and organizations, both profit and non-profit.
TMEP §§1402.01 and 1402.11.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods and services that are not within the scope of goods and services set forth in the present identification.
In the alternative, the applicant may adopt more than two identifications above and proceed as a multiple class application. If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods and services in each class and list the classes in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. If applicant submits the outstanding fees with a paper response, then applicant must submit $375 per class. If the applicant submits the outstanding fees with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html, then applicant must submit $325 per class. Consolidated Appropriations Act, 2005, Pub. L. 108-447.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application. In this case, the specimen of record only supports the services in international class 41; and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
The following is a properly worded declaration under 37 C.F.R. Section 2.20.
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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)
The specimen is unacceptable as evidence of actual trademark use because it appears to be an informational advertisement for the services. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 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. A properly worded declaration has been provided above.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number. No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
/Gene V.J. Maciol/
Gene V.J. Maciol
Trademark Attorney Advisor
Law Office 103
571 272 9280
571 273 9280 fax
HOW TO RESPOND TO THIS OFFICE ACTION:
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