Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-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.  TMEP §708.01.

 

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.

 

Serial Number  76/615635  ML MILLION DOLLAR MAKEOVER SWEEPSTAKES

 

The following were discussed in communication with the above applicant or attorney on June 1, 2005.  Applicant must respond to each refusal and/or requirement raised below.

 

I.  RECITATION OF SERVICES:

 

The applicant will adopt the following recitation of services, if accurate:

 

-                     A promotional contest to create credit card preference by offering personal make-overs provided by others, in International Class 35.

 

PTO ONLINE SEARCHING MANUAL:

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at www.uspto.gov.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

II.  CLASSIFICATION OF SERVICES:

 

The applicant will amend the application to classify the services in International Class 35.

 

III.  SPECIMEN:

 

The applicant will submit a substitute specimen that supports use of the mark with the identified services.  37 C.F.R. §2.56.  The specimen is unacceptable because it does not list the mark as filed.  Specifically, the ML is not present along with the other wording.  Examples of acceptable specimens are website printouts, signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant will 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.

 

The statement supporting use of the substitute specimen must read as follows:

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

DECLARATION:

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  If the applicant uses this declaration rather than a notarized statement, then at the end of its response, the applicant should insert the following declaration signed by a person properly authorized to sign on behalf of the applicant.

 

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)

 

                        _____________________________

                        (Print or Type Name and Position)

 

                        _____________________________

                                              (Date) 

 

 

-  ALTERNATIVE - Substituting a Basis:

 

If the applicant cannot comply with the requirement for a specimen of use under the Section 1(a) basis, the applicant may wish to amend the application to assert a Section 1(b) intent-to-use basis.

 

Accordingly, if the applicant intends to amend the basis from Section 1(a) to Section 1(b), 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).

 

As above, this statement must also 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).  Please see  immediately above for a properly worded declaration.

 

IV.  DISCLAIMER:

 

The applicant will make the following disclaimer:

 

No claim is made to the exclusive right to use MILLION DOLLAR MAKEOVER SWEEPSTAKES apart from the mark as shown.

 

Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.

 

If the applicant has any questions regarding this Priority Action, please telephone the assigned examining attorney.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

 

 

 

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

 

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.