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. 

 

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 76/646940

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

NO CONFLICTING MARKS

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

DISCLAIMER

Applicant must insert a disclaimer of the geographically descriptive words CITY OF SCOTTSDALE, ARIZONA in the application because it informs the consumers where the services derive from and where they are offered, namely, in the city of Scottsdale, Arizona. City is defined as an incorporated municipality in the United States with definite boundaries and legal powers set forth in a charter granted by the state[1].  Scottsdale is a city of south-central Arizona, a suburb of Phoenix.[2]    Arizona is a state of the southwest United States on the Mexican border. It was admitted as the 48th state in 1912.[3]   Applicant’s services are offered in the city of Scottsdale, Arizona.  Therefore, the words in question geographically describe where the services come from.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use CITY OF SCOTTSDALE, ARIZONA apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983). 

 

COLOR CLAIM NEEDS TO BE SUBMITTED

Applicant’s drawing depicts the mark in the colors blue, white and gray but no color claim was specifically submitted.  The applicant states that the drawing may include the colors blue, white and gray.  The applicant must specifically state that the drawing includes colors and must state the colors in question and the location of each one of the colors claimed.  Applicant has submitted a color drawing and must clarify whether color is a feature of the proposed mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(b).

If color is a feature of the proposed mark, then applicant must submit (1) a statement that “the colors blue, white and gray are claimed as a feature of the mark,” and (2) a separate description of where the colors appear in the mark, i.e., “the color blue appears on the outline of the rider and on the horse, the color gray appears in the words featured in the mark and the color white appears on the rider and on the bridle.”  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §§807.07(a)(i) and (a)(ii).

If color is not a feature of the mark, then applicant must submit a substitute black and white drawing of the proposed mark to replace the color drawing of record.

 If applicant submits a substitute drawing, it must comply with the following:

 

• The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

• Drawings must be made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

• The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

• If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54; TMEP §§807.06 et seq.

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.  The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.   

The Office strictly enforces these drawing requirements.

 

SPECIMENS DO NOT SHOW USE WITH ALL OF THE COLORS CLAIMED

 

Applicant must submit (1) a specimen showing use of the proposed mark with the appropriate color(s) claimed as a feature of the mark, 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 an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §§904.02(a) and 904.09.

 

Applicant has claimed the colors blue, white and gray as a feature of the mark.  However, the specimen submitted with the application does not demonstrate use of the mark as shown in the drawing because it shows the color black in place of the color blue.  Therefore, new specimens must be submitted showing the colors claimed.

 

SPECIMENS DO NOT SHOW USE WITH THE SERVICES LISTED

 

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, 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. §§2.56 and 2.59(a); TMEP §904.09.

 

The current specimen of record comprises a cd that does not specify any of the services listed by the applicant in the recitation.  Therefore, the specimen in question is unacceptable as evidence of actual service mark use.  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 examining attorney will reconsider this refusal if the applicant submits a specimen showing use of the mark in the sale or advertising of the services.  If the specimen differs from the specimen originally submitted, 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.  37 C.F.R. §2.59(a); TMEP §904.09.

 

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.

 

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 at least as early as the filing date of the application; 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)

SUBSTITUTING FILING BASIS

 

If the applicant cannot comply with the requirement for specimens for the 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.

 

In this case, the applicant may wish to amend the application to assert a 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.

 

RECITATION OF SERVICES IS INDEFINITE

 

The wording in the identification of services needs clarification because it is too broad and could include services classified in other international classes.  TMEP §§1402.01 and 1402.03.  The applicant should specifically identify the services that reference is being made to and should list each one of them in the correct class.  Please note that although the “municipal services” were acceptable in International Class 42 regardless of the services rendered, such recitation is no longer acceptable as of January 1^st, 2002.  The applicant must now list the services in question and classify each one of them accordingly.  In this case the applicant must specifically identify what each one of the services is and must list each one in the correct class.

 

The recitation of services should be amended to read as follows, if accurate:

 

“Municipal services, namely, legislation” is too indefinite and the applicant must be more specific.  That portion of the recitation should be amended to read as e.g. “Lobbying services, namely, promoting the interests of (specify the group and/or area of interest) in the field of legislation, in International Class 35.”

 

“Municipal services, namely, parks and recreation” is too indefinite and the applicant must be more specific.  That portion of the recitation should be amended to read as e.g. “Municipal services, namely, recreational park services, in International Class 41.”

 

“Waste management” belongs in International Class 40 and not in 42 as listed by the applicant.  Therefore, they should be reclassified accordingly.

 

 “Park land preservation programs” is too indefinite and the applicant must specifically identify the preservation programs in question.  It should read as e.g. “Municipal services, namely, promoting the public awareness fore land conservation and protection, in International Class 35.”

 

 “Planning” is too indefinite and it should be amended to specify the type of planning.  It should read as e.g. “Municipal services, namely, construction planning, in International Class 37.”

 

“Building and zoning” is too indefinite and the applicant must be more specific.  It should be amended to read as e.g.  “Municipal government services, namely, establishing and enforcing building and zoning codes, regulating development within the township, in International Class 42.”

 

“Business licensing” is too indefinite and the applicant must be more specific.  It should be amended to read as follows, if accurate:  “Municipal services in the nature of licensing of (the applicant must specify what these services pertain to and must classify them accordingly. 

 

“Regulation” is indefinite and the applicant must be more specific.  It should be amended to read as follows, if accurate: “Municipal services, namely, reviewing standards and practices to assure compliance with (indicate specific field of regulation) laws and regulations, in International Class 42.”

 

“Transportation” is too indefinite and the applicant must be more specific.  The applicant must specify the transportation related services.  Please note that generally the transportation services belong in International Class 39, depending on the nature of the transportation service.

 

 “Streets building and maintenance” should be amended to read as “Municipal services, namely, street construction and maintenance, in International Class 37.”

 

“Water, waste and recycling” is too indefinite and the applicant also listed in the same class services that belong in two classes.  The following amendment is suggested, if accurate:

 

“Municipal services in the nature of utility services, whereas water and sewer services are provided to the public, in International Class 39.”

 

“Recycling” services belong in International Class 40 and should be reclassified accordingly.

 

“Social services” is too indefinite and the applicant must identify the nature of the social services in question and should classify them accordingly.

 

“Development and maintenance of public libraries” is indefinite and the applicant must be more specific.  Please note that the public library services belong in International Class 41.

 

“Economic revitalization programs” is too indefinite and the applicant must be more specific with respect to the nature of these services.  The following amendment is suggested, if accurate:

 

“Municipal services, namely, educational services in the nature of an annual awards program to recognize the efforts of individuals, government agencies, and businesses who promote job creation and economic revitalization, in International Class 41.”

 

 “Cable tv programming” services belong in International Class 41.

 

“Legal services” belong in International Class 42.”

 

 “Intergovernmental relations” is too indefinite and the applicant must specifically identify what these services comprise.

 

“Police and civil protection services” belong in International Class 45.”

 

 

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

 

REQUIREMENTS FOR MULTI CLASS APPLICATIONS

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class of services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

 

FILING FEES

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

 

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

 

 

Florentina Blandu, Esq.

/FBLANDU/

l.o.112

tel. (571) 272-9128

fax (571) 273-9128

e-mail florentina.blandu@uspto.gov (for informal communications)

 

 

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.