UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/637641
APPLICANT: Royalty Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ROYALTY
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CORRESPONDENT’S REFERENCE/DOCKET NO: 16963-2
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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The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Search Results
Information regarding pending Application Serial No. 76/626389 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
Action on this application will be suspended pending the disposition of Application Serial No. 76/626389, upon receipt of the applicant's response resolving the following refusal and requirement.
THIS REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.
Registration is refused because the proposed mark, as used on the specimen of record, does not function as a service mark to indicate the source of applicant’s services defined as “commercial real estate development”. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051, 1052, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.
The specimen is unacceptable as evidence of actual service mark use because there is no reference to the applicant’s services, namely, commercial real estate development, as recited in the application. The specimen shows only the proposed mark used in connection with applicant’s real estate leasing services. A specimen is unacceptable if it does not show use of the service mark in relation to, or “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977); TMEP §§1301.04 et seq. 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.
The trademark examining attorney will reconsider this refusal if the applicant submits both (1) a substitute specimen showing use of the mark in the sale or advertising of the services recited in the application, and (2) 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. The following format is suggested for the statement and declaration or affidavit:
The substitute specimen was in use in commerce at least as early as the filing date of the application. 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 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)
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(Print or Type Name and Position)
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(Date)
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Drawing
THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen for the commercial real estate development services, and clarification is required. 37 C.F.R. §2.51; TMEP §807.12. Specifically, the drawing displays the mark as ROYALTY with a crown design on a rounded rectangular background; whereas, the specimen depicts the mark as ROYALTY with a crown design without the background element.
Applicant must either:
(1) submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq;
(2) submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by 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) and 2.72(a); TMEP §904.09; or
(3) amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis. TMEP §806.03(c).
NOTE: The specimen of use for the roofing services is currently acceptable and shows use of the mark set forth on the application drawing page. If applicant submits a new drawing to amend the mark to delete the non-distinctive background element (so that the new drawing coincides with the current specimen submitted for the commercial real estate development services), applicant will need to submit a new (substitute) specimen of use showing the mark used in commerce in connection with the roofing services that likewise shows the mark without the background element. The application must be limited to one mark. 37 C.F.R. §2.52(a); See TMEP §807.01.
If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.
/ELIZABETH J. WINTER/
Trademark Attorney-Advisor
USPTO, Law Office 113
(571) 272-9240
FAX Questions (571) 273-9240
FAX Responses (571) 273-9113
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
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.