Offc Action Outgoing

This Office action responds to the applicant’s communication received on July 19, 2007. The amendments to the entity designation and color description have been accepted and entered into the record.

However, the FINAL requirements regarding the recitation of services and the fact that the mark shown on the drawing page differs from the mark shown on the specimen are repeated and continued. Thus, with respect to these two requirements, the request for reconsideration is denied and the Final Office action issued on May 1, 2007 is continued. The applicant has until six months after the date the Final Office action was issued to submit a satisfactory response to the Final Office action, and/or file a notice of appeal with the Trademark Trial and Appeal Board.

For the applicant’s information: if the applicant believes that two of its companion applications were abandoned due to Office error, the applicant may file a request to reinstate the application, instead of a formal petition to revive. There is no fee for a request for reinstatement. Such a request should be captioned as a "Request for Reinstatement."

The applicant is advised as follows:

Recitation of Services

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 clarify the wording in the recitation of services by providing the common commercial name for the services, or indicating the nature of the services. The proper classification of the services will depend on the type of services that are being provided.

Based on the applicant’s response received on March 5, 2007, the applicant is using the mark in connection with “financial services” in Class 36. Therefore, the applicant may adopt the following identification of services, if accurate:

“Financial services, namely, ___ [specify the nature of the financial services, e.g. 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.

The FINAL requirement to clarify the recitation of the services is repeated and continued.

Mark Differs on Drawing Page and Specimen

Although the applicant has argued otherwise, 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. As noted previously, the drawing displays the mark as the term BLACKTIE appearing to the right 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). In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.03(c).

Sample Declaration – 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 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)

Declaration for Amending to Section 1(b)

As stated above, if the applicant cannot satisfy the above requirement and would like to amend the application filing basis to Section (1b) intent to use, the following is a properly worded declaration:

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. 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 the facts set forth in this application are true; 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)

This FINAL requirement is repeated and continued.

Applicant’s Options

As noted above, because there is time remaining in the response period, the applicant has the remainder of the response period to comply with the outstanding requirements and/or to appeal. TMEP Section 715.03(a).

/Amy Alfieri/

Trademark Attorney, USPTO

Law Office 109

phone: 571.272.9422

fax: 571.273.9109

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.