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  76/653751

 

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

 

Search Results

 

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.  However, the applicant must respond to the following informalities.

 

 

 

 

Deletion from Drawing

 

Applicant must submit a new drawing with the “™” symbol deleted because it is not part of the mark.  TMEP §§807.02 and 807.14(a).

 

Color Drawing With No Color Claim or Description

 

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 color(s) ___ [specify colors, e.g. black, white, and red] 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(s) ___ [identify colors] appear in ___ [specify where colors appear in the mark].”  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.

 

Applicant’s Entity Designation

 

The record is ambiguous as to who owns the mark, as the applicant is identified as two individuals and a limited liability company in different parts of the application.  The applicant must clarify its name and entity designation for the record.  TMEP Section 1201.02(c).  Please note that if the applicant is an individual, the applicant must provide his or her national citizenship for the record.  If the applicant is a limited liability company, the applicant must identify the state under whose laws it is organized.

 

Specimen Omitted

 

This application does not include a specimen for any of the identified class(es) of services.  A specimen showing use of the mark in commerce for each class of services is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a).  TMEP §904. 

 

Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in the sale or advertising of its services) for each class of services showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.56(a); TMEP §§904.01 et seq 904.09.

 

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.

 

 

 

 

Sample Declaration

Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a).  37 C.F.R. §2.20.

The 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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

 

ADVISORY – Possible Refusal – More than One Mark

 

In view of the nature of the proposed mark shown on the drawing page of the application, applicant is advised that, upon the trademark examining attorney’s consideration of the applicant’s specimen, registration may be refused on the ground that the application seeks registration of more than one mark.  Trademark Act Sections 1, and 45, 15 U.S.C. §§1051 and 1127.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01.  In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974).

 

In determining whether applicant is seeking registration for more than one mark, the trademark examining attorney will consider the display of mark shown on the specimen.  Since no specimens were submitted with the application, the examining attorney will make this determination upon the applicant’s submission of specimens of use.  If the specimen shows elements of the mark on the drawing page separated to such an extent that they appear as separate marks, then registration may be refused accordingly.

 

Dates of Use

 

The dates of use are ambiguous, and clarification is required. 

 

Date of First Use Anywhere

The drawing page identifies the date of first use anywhere as “April 1998,” which is interpreted as the last day of the month, or April 30, 1998.  However, the application identifies the date of first use anywhere as “1998,” which is interpreted as the last day of the year, or December 31, 1998.  TMEP Section 903.07.

 

Date of First Use in Commerce

The drawing page identifies the date of first use in commerce as “May  2003,” which is interpreted as the last day of the month, or May 31, 2003.  However, the application identifies the date of first use in commerce as “1998,” which is interpreted as the last day of the year, or December 31, 1998.  TMEP Section 903.07.

 

Applicant must clarify the date of first use of the mark anywhere and the date of first use of the mark in commerce for the record, and verify these dates of use with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

Recitation and Classification of Services

 

The wording used to describe the services needs clarification because the nature of the services that are being provided is unclear, and the wording identifies services that may be classified in more than one international class.  (Also, the recitation of services listed on the drawing page differs slightly from the wording used in the body of the application, and clarification is required).  The applicant must provide the common commercial name for the services, or identify the nature of the services.  The proper classification of the services will depend on the type of services being provided.

 

Applicant may adopt the following identification of services, if accurate: 

 

“Financial affairs, namely, ___ [specify type of services, e.g. financial statement preparation and analysis for businesses]; insurance affairs, namely, ___ [specify type of services, e.g. insurance claims auditing services],” in International Class 35;

 

and/or

 

“Monetary affairs, namely, ___ [specify type of services, e.g. acquisition and transfer of  monetary claims]; financial affairs, namely, ___ [specify type of services, e.g. financial consultation]; real estate affairs, namely, ___ [specify type of services, e.g. appraisal of real estate]; insurance affairs, namely, ___ [specify type of services, e.g. insurance administration],” in International Class 36; 

 

and/or

 

“Real estate affairs, namely, ___ [specify type of services, e.g. real estate development],” in International Class 37.

 

TMEP §1402.01.

 

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.

 

For your assistance and convenience, the “Acceptable Identifications of Goods and Services Manual” may be searched at the Office’s global network computer website address of  http://www.gov.uspto.report/main/trademarks.htm.

 

Combined Applications

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that may be classified in at least 3 international classes, however applicant paid the fee for only 1 class(es).

 

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

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

 

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

 

(2)   Applicant must submit a filing fee for each international class of goods and/or 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 goods and/or 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).

 

As noted above, no specimens have been submitted at this time.

 

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

 

 

/Amy Alfieri/

Trademark Attorney

USPTO, Law Office 109

phone: 571.272.9422

fax: 571.273.9109

 

 

 

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.