Offc Action Outgoing

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. 

 

 

Serial Number  76/622384

 

This letter responds to the applicant’s communication filed on August 10, 2005.  The applicant 1) provided the applicant’s citizenship 2) provided a standard character claim and 3) argued that the specimen of record was acceptable.  Numbers 1 and 2 are accepted.  Number 3 is not accepted.

 

The requirement for a specimen is continued and made FINAL.

 

Specimen

 

The requirement for a specimen is now made FINAL.  37 C.F.R. §2.64(a).

 

Applicant must submit a substitute specimen showing use of the mark for the goods and/or services specified in the application, because the specimen currently of record does not show use of the mark for any goods and/or services identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq..  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

The current specimen of record comprises a webpage which shows the proposed mark appearing in parenthesis after the wording Prospect Experience Management in the text of the web page.  The specimen does not show use for applicant’s goods and/or services because the mark is used as the name for one of the two online surveys and not directly in connection with the applicant’s business marketing services.  Moreover, the use of the mark as shown in the specimens of record is merely part of the overall advertising copy used in connection with the wording Prospect Experience Management (PRM).  Thus, the mark PRM does not make a separate and source indicating impression so as to function as a trademark in connection with the applicant’s services as indicated in the application.  See, In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Morganroth, 208 USPQ 284 (TTAB 1980); and In re European-American Bank & Trust Company, 201 USPQ 788 (TTAB 1979).

The applicant argues that the specimen submitted with the original application is a web page from the web site offering business marketing services.  The applicant indicates that the page identifies the mark in bold letters followed by a "TM" notice.  This is not correct.  The TM notice does not appear after the mark in the specimen of record.  The examining attorney invites the applicant to look at the specimens of record at http://portal.gov.uspto.report/external/portal/!ut/p/_s.7_0_A/7_0_1I1/.cmd/ad/.ar/sa.gov.uspto.tow.actions.DetailViewAction/.c/6_0_CH/.ce/7_0_1JJ/.p/5_0_1CH/.d/0#.  The examining attorney believes the applicant is referring to a different web page which is not of record.

Thus, taken as a whole the specimen does not shows use of the applicant’s proposed mark as a trademark for the  applicant's services.  While the surveys are one of the means by which applicant offers its business marketing services, the mark as used in the specimen identifies a survey and not the applicant’s services.  Consumers would perceive the mark as the name of the applicant’s survey and not for the nature of the marketing services.  Moreover, the applicant’s specimen fails to show proper trademark use in connection with the applicant’s services as the mark is used as Prospect Experience Management (PEM) and not PEM alone.  If the applicant believes the specimen of record is still acceptable, the applicant is encouraged to call the examining attorney to discuss how the current specimen of record is acceptable.

Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  In this case, the specimen should show use of the mark PEM in the sale or advertising of the business marketing services.

For the foregoing reasons, the requirement for a specimen is now made FINAL.  37 C.F.R. §2.64(a).

Substituting A Basis

 

If applicant cannot comply with the requirement for a specimen for the Section 1(a) basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

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

 

Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:

 

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.

 

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R, §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.

 

Statement

 

Applicant must submit 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. §2.59(a); TMEP §904.09.

 

Declaration

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a).  37 C.F.R. §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 and the like may jeopardize the validity of the application or document 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), 1126(d) or 1126(e), he/she believes the 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)

 

Response to this Action

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).

 

 

 

 

 

 

 

/Brendan D. McCauley/

Brendan D. McCauley

Examining Attorney

Law Office 114

(571) 272-9459

 

 

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.