To: | GLYNLYON, INC. (jschmidt@glynlyon.com) |
Subject: | TRADEMARK REGISTRATION NO. 3118910 - POWERED BY SWITCHED-ON SCHOOLHOUSE - N/A |
Sent: | 09/30/16 08:04:50 AM |
Sent As: | PRG@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION
U.S. REGISTRATION NO. 3118910
OWNER: GLYNLYON, INC.
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CORRESPONDENT’S ADDRESS: |
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MARK: POWERED BY SWITCHED-ON SCHOOLHOUSE
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CORRESPONDENT’S REFERENCE/DOCKET NO. N/A
CORRESPONDENT’S EMAIL ADDRESS: |
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CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:
http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp
ISSUE/MAILING DATE: 9/30/2016
U.S. Registration Number 3118910
The Combined Section 8 Affidavit & Section 9 Renewal Application was received on July 14, 2016. The Section 9 portion of the combined filing can be granted. However, the Section 8 portion is not accepted for the reason(s) set forth below.
ISSUES PERTAINING TO SECTION 8 PORTION ONLY
SPECIMEN
The specimen submitted with the Section 8 Affidavit is unacceptable because it shows the mark used in connection with goods that are different from those identified in the registration for service. See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993). Specifically, the specimen shows use for “CD”. The services in the registration comprise the following: Educational services, namely, providing courses of instruction via the internet in the fields of history, language, science, math, Bible and other elective courses for elementary, secondary, and post-secondary education.
The specimen must be used on or in connection with the services listed in the registration. TMEP §1604.12(a).
A specimen for a service mark must show use of the mark “in the sale or advertising of services.” See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(2). Specimens for service marks must show an association between the mark and the services identified in the registration. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997). If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage. See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of services specified in the registration; 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 during the relevant period for filing the 10-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
DECLARATION
The following language is required to support use of any substitute specimen provided, if properly signed and dated: When responding via TEAS, the owner should copy the entire paragraph below into the body of the response, if accurate and applicable, as it is not part of the TEAS declaration.
“The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”
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 above 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 of Authorized Person
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Print/Type Name & Position
__________________________
Date
The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).
DEFICIENCY SURCHARGE REQUIRED: The owner must submit a $100 deficiency surcharge with its response to this Office action. 37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).
/Dawn Hembry/
Dawn Hembry
Dawn.Hembry@USPTO.GOV
Post Registration Division
571\272-9506(Office)
571\273-9506(Fax)
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this registration will be placed in the official registration record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.