UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The examining attorney has reviewed the statement of use and determined the following: 

 

SPECIMEN UNACCEPTABLE

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the services specified in the statement of use.  A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of services in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b). 

 

In the present case, the specimens appear to advertise the ability for customers to assemble meals but make no reference to the personalized menu and food preparation and food catering services that are identified in the statement of use.  The current specimen does illustrate use a menu, however, there is no indication that applicant provides “personalized” menu planning, which would be specific menu planning on a person-to-person basis. There is also no reference to catering services. To cater is defined as to “supply food ready to eat,” “to provide food and drink for a social or business function” or “the business of providing food service at a remote site.” None of which are indicated in the specimen of use. Please see the attached dictionary definitions of “personalized,” “cater” and “catering.” Please note that it appears that applicant is providing more of a retail store service featuring food as opposed to personalized menu and food preparation and food catering for the general public. Applicant must submit a specimen which demonstrates use of the applied for mark in association with those services as identified in the statement of use.

 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of services in the statement of use; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of 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.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark for the identified services.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

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 that 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)

 

 

 

 

MARK DIFFERS ON DRAWING AND SPECIMEN

 

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  37 C.F.R. §2.51; TMEP §§807.12-12(a).  Specifically, the drawing displays the mark with the dove and fork design to the left of the wording “Dream Dinners”, while the specimen shows the mark as the design above the wording.

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the specimen but does not materially alter the mark; 37 C.F.R. §2.72(b); TMEP §§807.13, 807.13(a) and 807.14 et seq; or

 

(2)   submit a substitute specimen that shows use of the mark shown in the drawing and includes a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to 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. §§2.59(b) and 2.72(b); TMEP §904.09.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please contact the assigned examining attorney.

 

 

/Katherine Connolly/

Trademark Examining Attorney

Law Office 101

Phone: 571.270.1506

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.