UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This Office Action is in response to applicant’s communication filed on December 31, 2007.

 

In an Office Action dated June 28, 2007, the examining attorney required the applicant to claim ownership of prior registrations, submit specimens demonstrating use of the mark along with the appropriate declaration, submit a proper signed declaration, and amend its identification of goods and services.

 

The examining attorney acknowledges and accepts into the record applicant’s claim of prior ownership of registrations and applicant’s signed declaration and those requirements are withdrawn. TMEP §714.04. However, applicant has failed to proper specimens demonstrating use of its goods and services and failed to properly classify and amend its goods and services. Therefore, those requirements are now made FINAL. 37 C.F.R. §2.64(a).

 

Specimens Omitted

 

The application is incomplete because it does not include the required specimens showing use of the applied-for mark in commerce for the goods and/or 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 goods and/or 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; and

 

(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 goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.  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 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 §806.01(b). See below for sample declaration.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051-1053, and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

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.

 

Declaration for 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 specimen 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 the 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)

 

Identification of Goods and Services

 

The identification of goods and/or services remains unacceptable because some of them remain misclassified and indefinite.

 

Applicant classified the goods “novelties, namely, non-metal key chains,” in International Class 14 and Class 20; however, the correct classification is only in International Class 20.  Applicant must delete Class 14.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). While the applicant has included these goods in Class 20, it has failed to delete its Class 14 goods.

 

Further, applicant must amend the identification of goods and/or services to specify the common commercial or generic name for the goods and/or services.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  Specifically, applicant must specify whether its books are part of a series of books. Also, applicant must specify that it provides the website indicated in Class 42 and provide whether some of the services identified below are “for others” or are merely incidental to its own business. Also, the wording “retrieving” and “providing” is vague and applicant must specify these services with more precision. Last, the wording “behavioral science relating to downloadable features” is vague and applicant must specify.

For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below. The applicant should note that the identifications in Classes 9, 21, 35, 38, and 41, are acceptable as proposed.

“Publications, namely journals, newsletters, magazines, pamphlets, series of books, monographs, all pertaining to the psychological and social sciences,” in International Class 16;

“Non-metal and non-leather key chains; plastic keychain tags; novelties, namely, non-metal key chains,” in International Class 20;

“Providing an interactive web site providing links to a mass community of others and featuring information relating to psychology and behavioral sciences relating to downloadable features, namely, {specify this service as it is unclear what “behavioral science relating to downloadable features” is}; information dissemination services, namely, retrieving and providing, namely, {specify these services as retrieving and providing are too vague} printed and electronically disseminated articles pertaining to the psychological and social sciences for others,” in International Class 42.

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Response Guidelines for Final Actions

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TMEP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/James W. Stein/

Trademark Examining Attorney

Law Office 107

Phone No. (571) 272-3056

 

 

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 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.