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  76/619560

 

This letter responds to the applicant’s communication filed on December 8, 2005.

 

The applicant (1) claimed ownership of prior U.S. registrations; and (2) argued against the failure to function as a service mark refusal under Sections 1, 3, and 45 of the Trademark Act.  No. (1) is acceptable.

 

Refusal Under Sections 1, 3, and 45 – Failure to Function as a Service Mark

 

Registration was refused under Sections 1, 3, and 45 of the Trademark Act on the ground that the specimen does not show the use of the mark in conjunction with the services identified in the application.  The applicant’s services are identified as “application of protective coatings,” in International Class 40.  The specimen, however, shows the use of the mark in conjunction with slurry coating compositions, which are “goods” not “services.” 

 

The applicant argues that “The specimen submitted with the application is advertising material, which describes the benefits of Applicant's protective coatings applied under the SERMALCOTE mark.  Applicant submits that the specimen is an acceptable specimen for the application of protective coating services.”  In support of the foregoing argument, the applicant cites to TMEP §1301.04(a):  “To show service mark usage, the specimens must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source.” 

 

In this case, however, there is no indication on the specimen, which is an advertisement for the slurry coating compositions, that the applicant is providing application of protective coatings services under the SERMALCOTE mark.  From the applicant’s specimen:  “However, SermAlcote overcomes the need for a high degree of process control because the formation of diffused aluminide coatings using SermAlcote slurries is determined by only processing time and temperature, not applied slurry amount.”  See also the excerpt of Patent No. 6,110,262 attached to the prior Office action, which describes the goods as “The slurry coating composition of the invention comprises a Cr--Al alloy containing about 50 wt % to about 80 wt % Cr in the alloy, LiF in an amount greater than or equal to 0.3 wt % of the Cr-- Al alloy, an organic binder, and a solvent.”

 

For the foregoing reasons, the failure to function as service mark refusal under Sections 1, 3, and 45 of the Trademark Act is maintained and made FINAL.

 

As advised in the prior Office action, the applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis.  TMEP §§806.03 et seq.  In this case, applicant may wish to amend the application to assert a Section 1(b) filing basis, based on a bona fide intention to use the mark in commerce.

 

Where an application is based on a bona fide intention to use the mark in commerce (Section 1(b)), applicant must submit the following statement:

 

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 as of the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

(571) 272-9164

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.