UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/653751
APPLICANT: Michael Richards
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BLACKTIE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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
This Office action responds to the applicant’s correspondence received on August 29, 2006. The substitute drawing, color claim, specimen, and amended dates of use have been accepted and entered into the record.
The color description must be amended to accurately describe where the color appears in the mark. Additionally, clarification is required, as the mark shown on the drawing page differs from the mark shown on the specimen.
The advisory regarding a refusal on the ground that the applicant seeks registration of more than one mark is withdrawn. However, the requirement to clarify the applicant’s entity designation and clarify the recitation and classification of services is repeated and continued. The applicant is advised as follows.
The applicants have been identified as two individuals. As noted previously, if the applicant is an individual, the applicant’s national citizenship must be provided for the record. In this case, the national citizenship of the two individuals must be provided. This requirement is repeated and continued.
The wording used to describe the services needs clarification because the nature of the services that are being provided is unclear. The applicant has indicated that it intends to keep the services in Class 36 and delete any services that would be classified in Classes 35 or 37. As noted previously, the applicant must provide the common commercial name for the services, or indicate the nature of the services. The proper classification of the services will depend on the type of services that are being provided.
Applicant may adopt the following identification of services, if accurate:
“Financial services, namely, investment consultation,” in International Class 36.
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.
ADVISORY - Combined Applications
As noted previously, 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).
Please note that the specimen(s) of record appear to be acceptable for class(es) 36. However, the examining attorney will re-examine the specimen once the applicant has clarified the recitation of services.
The requirement to clarify the recitation and classification of the services is repeated and continued.
Color Description
Applicant must amend its color description to accurately describe where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i). The following description is suggested: “The top hat, silhouette of the man, bow tie, tuxedo, rose stem and the wording BLACKTIE are black. The shirt is white. The rose is red.”
Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(ii).
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. Specifically, the drawing displays the mark as the term BLACKTIE appearing to the left of a stylized design, and the specimen depicts the mark as the term BLACKTIE appearing underneath a stylized design.
Applicant must either:
(1) submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq;
(2) submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by 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; or
(3) amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis. TMEP §806.03(c).
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:
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.