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 assigned trademark examining attorney has reviewed the Statement of Use dated 7/2/2007 and has determined the following:

 

Statement of Use: Specimen Not Acceptable

 

The specimen included with the statement of use is not acceptable because it does not show the applied-for mark in actual use in commerce in the sale or advertising of the listed services.  Section 45 of the Trademark Act requires use “in the sale or advertising of services.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(2).

 

The submitted specimen makes no reference to applicant’s wholesale distributorship services.  A specimen must show an association between the mark and the services for which registration is sought.  A specimen that shows only the mark, with no reference to the services, does not show service mark usage.  TMEP §1301.04(b); In re Adair, 45 USPQ2d 1211 (TTAB 1997).    The submitted specimen appears to consist of a label, which would normally be acceptable to show use on certain goods, but not for the provision of services, which should show promotion of the services in commerce.

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark in use in commerce for the services specified in the application; and

 

(2)   The following statement, verified with an affidavit or a 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.  15 U.S.C. §§1051-1053 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

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

 

Sample Declaration for Substitute Specimen

 

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)

 

Response

 

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

 

 

 

/Peter Bromaghim/

Trademark Examining Attorney

Law Office 107

Phone: (571)-272-8912

Fax: (571)-273-8912

 

 

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.