Offc Action Outgoing

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Nevertheless, the applicant must respond to the following informalities.

Application Unsigned.

As noted by applicant’s counsel at the time of filing, the application was not signed. At this point, the application must include a statement that is signed and verified or supported by a declaration under Section 2.20 by a person properly authorized to sign on behalf of the applicant. A person who is properly authorized to sign on behalf of the applicant is: (1) a person with legal authority to bind the applicant; or (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. Section 10.1(c) who has an actual or implied written or verbal power of attorney from the applicant. 37 C.F.R. Section 2.33.

Applicant must submit a statement attesting to the facts set forth in the application, and confirming that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901. This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.32(b) and 2.33. No signed verification was provided with the application.

To satisfy this requirement, applicant may include the following declaration paragraph at the end of its response, properly signed and dated:

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 any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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 declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/). The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols. 37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

Section 1(a) Filing Basis Requirements Not Met.

The application does not include the required dates of first use of the mark. Applicant must provide the following, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: (1) the date of first use of the mark anywhere, and (2) the date of first use of the mark in commerce. 15 U.S.C. §1051(a)(2); 37 C.F.R. §§2.34(a)(1)(ii)-(iii) and 2.71(c); TMEP §§903 et seq. These two dates must be provided even if they are the same. TMEP §903.04.

If applicant cannot comply with the requirement for use basis asserted under Section 1(a), then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

In this case, applicant may wish to amend the application to assert an intent to use basis under Section 1(b).

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).

New Specimens Required: Website Advertising is Insufficient.

The specimen is unacceptable as evidence of actual trademark use because it is a website advertisement or a webpage for goods. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed or electronic advertising material generally are not acceptable specimens because they fail to show use of the mark actually on the goods themselves. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); Trademark Manual of Examining Procedure Section 904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). Even though these goods are computer software/hardware goods, a web advertisement is still insufficient.

The applicant must submit a specimen showing the mark as it is used in commerce on the goods themselves. 37 C.F.R. Section 2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. Please note that the applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 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. Section 2.59(a); Trademark Manual of Examining Procedure Section 904.09.

The following is a properly worded declaration under 37 C.F.R. Section 2.20, with a statement that the substitute specimen was in use in commerce at least as early as the filing date of the application. At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the substitute specimen was in use in commerce at least as early as the filing date of the application; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

Applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.

Again, in this case, applicant may wish to amend the application to assert an intent to use basis.

Responding to this Office Action.

No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney. However, you may be able to can receive a response faster by sending me an email at john.dalier@uspto.gov with any questions regarding this Office Action. Note that this email address is not for responses to Office Actions, just questions about Office Actions.

Copies of Documents

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: <http://portal.gov.uspto.report/external/portal/tow>. Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR. The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access. This conversion process is expected to take several years.

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

/John D. Dalier/

Trademark Examining Attorney

Law Office 106; 571 272 9150

Fax (571) 273-9106

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.