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  76/643950

 

This letter confirms Applicant’s response filed August 21, 2006.  Applicant’s amendment seeking registration on the Supplemental Register has been noted and made of record.  However, because Applicant’s response contains a new issue, the examiner must now issue this Office Action.

 

New Issue: Mark Differs on Drawing and Specimen

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required.  37 C.F.R. §2.51; TMEP §§807.12 and 807.12(a).  In the present case, the drawing displays the mark as MOMAGER, and the specimen shows the mark as THE MOMAGER GUIDE.  Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq and 904.09. 

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears on the drawing, with 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 (See the sample declaration attached to the previous Office Action); or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  TMEP §806.03(c).

Identification of Goods and Services – Amendments Unacceptable

 

The proposed amendment to the identification cannot be accepted because the word “women” refers to consumers that are not within the scope of the “mothers” that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this word should be deleted from the identification.

 

In addition, pursuant to a telephone conference between Applicant’s counsel and the examiner on October 5, 2005, Applicant may amend the description of goods in Class 16 to include “manuals” since this word is within the scope of the books set forth in the original identification.  See the attached dictionary definition. 

 

The applicant may adopt any or all of the following descriptions, if accurate: 

 

“Prerecorded audiotapes, videotapes, CD-ROM's and DVD’s featuring educational and training instruction in the field of management and leadership skills for mothers at home and in the workplace”, in International Class 9;

 

“Educational and seminar materials, namely, books and manuals in the field of management and leadership skills for mothers at home and in the workplace”, in International Class 16; and/or

 

“Educational and training services, in-person, teleconference and online, namely classes, presentations and seminars in the field of management and leadership skills for mothers at home and in the workplace”, in International Class 41.

 

TMEP §1402.11.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at <http://tess2.gov.uspto.report/netahtml/tidm.html>.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods and/or services that are not within the scope of goods and services set forth in the present identification.

 

Based on the foregoing remarks, the requirement to properly amend the description of goods and services is maintained and continued.

Specimens Unacceptable

 

Aside from the different marks shown in the drawing and specimens of record, the specimens are unacceptable as evidence of actual trademark or service mark use for the goods and services in Classes 16 and 41 because they do not show use of the mark with the goods and services listed in the application.  Specifically, the “cover to a DVD case” submitted with Applicant’s response does not show use with the “books” in Class 16 and the “radio advertisement” promotes Applicant’s book rather than the “educational and training services” identified in Class 41 in the application.  Accordingly, the applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56. 

 

For the goods in Classes 9 and 16, examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq. 

 

Regarding the services in Class 41, examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq. 

 

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, 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 requirement to submit acceptable specimens of use is maintained and continued.

 

Miscellaneous

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

 

 

/David Yontef/

Trademark Attorney Advisor

Law Office 105

(571) 272-8274

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.