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  76/670263

 

The assigned trademark examining attorney has reviewed the referenced application and has 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.

 

Entity

 

The application identifies applicant as an “Individual” with USA citizenship and a “Corporation” incorporated in New York.  This is not an acceptable entity designation because applicant cannot be both an Individual and Corporation.  TMEP §803.03.

 

Therefore, applicant must specify the type of entity applying, e.g., corporation, unincorporated association, partnership or joint venture.  In addition, applicant must specify the U.S. state or foreign country under which it is organized.  37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.  The applicant may simply state that he is an individual, United States citizen.

 

Basis for Filing

 

The filing basis of the application is unclear.  In the instant case, applicant listed the services as “Restaurants” under §1(a) Use in Commerce.  Applicant also listed 3/5/01 as the date of first use anywhere.  However, the remaining required sections are blank.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §2.32(a)(5); TMEP §806.  An application may be filed based on any of the following:

 

(1)    Use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));

 

(2)    A bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));

 

(3)    A claim of priority, based on a foreign application filed within six months of the U.S. application, under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c)); and/or

 

(4)    A foreign registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)).

 

Therefore, applicant must (1) amend the application to clearly specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.  TMEP §806. 

 

Depending on the circumstances, applicant may be entitled to assert more than one basis for filing.  In such a case, applicant must:  (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis, and (3) separately list each basis, followed by the goods or services to which that basis applies.  See 37 C.F.R. §2.34.  TMEP §§806.02 et seq.

 

Although multi-basis applications are permitted, applicant may not assert both use in commerce and intent to use for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Requirements for an Application Based on §1(a): Use in Commerce

 

An application based on use of the mark in commerce must include the following:

 

(1)   The following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date”;

 

(2)   The date of first use of the mark anywhere on the goods or in connection with services;

 

(3)   The date of first use of the mark in commerce as a trademark or service mark;

 

(4)   One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce).  If a specimen was not submitted with the initial application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date.”

 

(5)   Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20 and 2.33, of the above statements and dates of use. 

 

15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

Requirements for an Application Based on §1(b): Intent-to-Use

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:

 

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.

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

Significance of Mark

 

Applicant must specify whether “WESTVILLE” has any significance in the restaurant industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Specimen

 

It appears that applicant is filing a §1(a), Use in Commerce application. If so, the application is incomplete because it does not include the required specimen showing use of the applied-for mark in commerce for the services identified in the application.  An application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each class of services.  Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §904.

 

Therefore, applicant must submit the following:

 

(1)     A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce.

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.56(a); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of 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.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.  In the alternative, applicant may cancel the Section 1(a) basis and rely solely on the already asserted Section 44(e) basis, for which a specimen would not be required.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).

 

In order to amend the Section 1(a) basis to either Section 1(b) or Section 44(e) of the Trademark Act, applicant need only provide a written request to do so.  TMEP §§806.02(g) and 806.03(g).

 

Pending a proper response, registration is refused for those services based on Section 1(a), because applicant has not provided evidence of use in commerce of the applied-for mark.  15 U.S.C. §§1051(a) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Response Guidelines

 

There is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

Applicant May Wish to Seek Trademark Counsel

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

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.

 

 

 

/tfrazier/

Tamara G. Frazier

Trademark Examining Attorney

Law Office 116

Phone:  (571) 272-8256

Fax:  (571) 273-8256

 

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.