Offc Action Outgoing

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  76/666729

 

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

 

no similar registered or pending mark

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.

 

Premature Use REFUSAL

Registration is refused because applicant had not used the mark in connection with the identified services before the filing date of the application.  Trademark Act Sections 1(a), 2, 3 and 45, 15 U.S.C. §§1051(a), 1052, 1053 and 1127.  Use of a mark in the advertising of goods or services before actually rendering the services is not acceptable as the basis for a service mark application under Trademark Act Section 1(a).  See In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §806.01(a) and 901.01.

 

In the present case, applicant's specimen state "New Concept in Maintenance-Free Retirement Living Coming to Highlands Ranch..." "only a limited number of homes planned. Don't lose your opportunity to live at Wind Crest." Thus, it appears that applicant's retirement home services were not being offered before the filing date of the application.

 

If applicant did not use the mark in commerce on or before the filing date, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis.

 

In this case, applicant may wish to amend the application to assert a Section 1(b) basis.  TMEP §806.03(c).

 

Sample Declaration to Amend to Section 1(b)

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement to amend to Section 1(b):

 

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 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; 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)

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.

 

CLASSIFICATION OF services

Applicant has provided the following classification and identification of services in its application:

• life care retirement home services (Class 042)

 

The services are classified incorrectly.  Applicant must amend the application to classify the services in International Class 043.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The decision as to the proper classification of goods or services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

/Benji Paradewelai/

Benji Paradewelai

Trademark Attorney

U.S. Patent & Trademark Office

Law Office 101

Phone: 571.272.1658

Fax: 571.273.1658

 

 

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.