UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing  date, this case will be given priority handling.  TMEP §708.01.

 

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.

 

OFFICE RECORDS SEARCH:  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.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number  76/656144

 

The following were discussed in communication with Robert Lev on August 24, 2006.  Applicant must respond to each refusal and/or requirement raised below.

 

 

Identification of Services

 

The entire identification of services, “fundraising (including use of) --- letterheads, periodicals, greeting cards, other communication devices” is indefinite.  Also, parentheses are not permitted in the identification of services.  The applicant must list only the service provided and delete the extraneous wording.  The applicant may adopt the following identification, if accurate: 

 

Charitable fundraising, in Class 36.

 

TMEP §1402.01.

 

New Specimen Required

 

The specimen does not show use of the mark for the fundraising services identified in the application.  Although the CIM Patron’s Report is acceptable from the standpoint for referring to the services, the mark on that specimen is different from the mark on the drawing page.  The mark on the drawing page has an atom structure, while the one on the Patron’s Report has only circles and has the additional wording 10^th Anniversary.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing and also mentions the fundraising services.  37 C.F.R. §2.51; TMEP §807.14.  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) and 2.72(a); TMEP §904.09.

 

While the other two specimens do show the same mark as on the drawing page, those specimens do not mention the fundraising services, so they are unacceptable.  One only lists contact information and the other specimen appears to be letterhead for an educational department.  The applicant must submit a specimen showing use of the mark for the services specified.  37 C.F.R. §2.56; TMEP §904.  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.

 

The statement and declaration to support a substitute specimen are as follows:

 

The substitute 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 may jeopardize the validity of the application 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)

 

 

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

 

 

 

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

 

 

 

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