OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application and the 02/10/2011 amendment to allege use have been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Results of Trademark Act Section 2(d) Search

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

Summary of Issues that Applicant Must Address

Mark in Specimens Does Not Agree with Mark in Drawing – Material
Specimen Refusal – Business Card Specimen
Requirement for a Color Claim and Mark Description

Mark in Specimens Does Not Agree with Mark in Drawing – Material

The marks on the specimens disagree with the mark on the drawing. In this case, the website specimen displays two marks: (1) LIVLUNA and design and (2) FUN FEARLESS FEMALES KICKING A** AND SAVING THE WORLD IN STYLE. The business card specimen displays the mark as LIVLUNA FUN FEARLESS FEMALES KICKING A** AND SAVING THE WORLD IN STYLE and design. However, the drawing shows the mark as LIVLUNA SMART LADIES KICKING A** AND SAVING THE WORLD IN STYLE and design.

An amendment to allege use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services specified in the amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.76(b)(2); TMEP §§904, 1104.09(e). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(1).

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2), (b)(2); see TMEP §§807.12(a), 807.14 et seq. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing.

Specifically, with respect to the website specimen, it displays a mark comprised of the term LIVLUNA and design without a slogan, and a mark comprised only of a different slogan, FUN FEARLESS FEMALES KICKING A** AND SAVING THE WORLD IN STYLE. These two marks have a different appearance, sound and connotation than the mark on the drawing. In particular, the LIVLUNA and design mark on the website is missing the entire slogan that appears on the drawing and slogan-only mark on the website is missing the LIVLUNA and design elements, and consists of a very different slogan than the slogan that is part of the mark on the drawing.

With respect to the business card specimen, the slogan that appears in the mark, FUN FEARLESS FEMALES KICKING A** AND SAVING THE WORLD IN STYLE, consists of entirely different words at the beginning of the slogan (i.e., “FUN FEARLESS FEMALES”) than the slogan in the mark on the drawing. The first words in the slogan on the business card specimen comprise an alliterative phrase (i.e., “FUN FEARLESS FEMALES”) that creates a different appearance, sound, and meaning than the wording “SMART LADIES” that appears at the beginning of the slogan that forms part of the mark shown on the drawing.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use in commerce of the mark on the drawing. See 37 C.F.R. §2.59(b)(1); TMEP §807.12(a).; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the filing of the amendment to allege use.” See 37 C.F.R. §§2.59(b)(1), 2.193(e)(1); TMEP §§904.05, 1104.09(e). 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); TMEP §904.05.

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may withdraw the amendment to allege use and assert use at a later date when appropriate specimens are available. See 37 C.F.R. §2.76(h). The fee for the amendment to allege use will not be refunded. TMEP §1104.10. However, if applicant withdraws the amendment to allege use, registration will not be granted until applicant amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

Pending receipt of a proper response, registration is refused because the specimens do not show the applied-for mark in use in commerce as a service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.76(b)(2); TMEP §§904, 904.07(a).

Specimen Refusal – Business Card Specimen

In addition to the refusal outlined above, the specimen comprising the front portion of a business card is also not acceptable because it does not show the applied-for mark in use in commerce. An amendment to allege use must include a specimen showing the applied-for mark in use in commerce for each class of services specified in the amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.76(b)(2); TMEP §§904, 1104.09(e).

In particular, the business card specimen merely shows a materially different mark on the front portion of the business card and there is no reference to applicant’s health information services on the business card. Thus, the specimen fails to show proper use of the applied-for mark in the sale or advertising of the health information services.

A specimen for a service mark must show use of the mark “in the sale or advertising of services.” Trademark Act Section 45, 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(2); TMEP §1301.04. Indeed, “[w]hile the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). There must be sufficient reference to the services in the specimen to create this association. In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999); see TMEP §§1301.04 et seq. If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage. See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of services specified in the amendment to allege use; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the filing of the amendment to allege use.” 37 C.F.R. §2.59(b)(1); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

If applicant cannot satisfy the above requirements, applicant may withdraw the amendment to allege use and assert use at a later date when proper specimens become available. See 37 C.F.R. §2.76(h). The fee for the amendment to allege use will not be refunded. TMEP §1104.10. However, if applicant withdraws the amendment to allege use, registration will not be granted until applicant amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

Pending receipt of a proper response, registration is refused because the business card specimen does not show the applied-for mark in use in commerce as a service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.76(b)(2); TMEP §§904, 904.07(a).

Requirement for a Color Claim and Mark Description

Applicant has submitted a color drawing, but has not specified the colors claimed as a feature of the mark or provided a mark description that identifies the literal and design elements and specifies where all the colors appear in those elements. Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark and a mark description of the literal and design elements that specifies where all the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq.

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). Generic color names must be used in the color claim and mark description, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).

Therefore, applicant must provide a color claim and a mark description specifying where all the colors appear in the mark. The following color claim and mark description are suggested, if accurate:

Color Claim: The colors purple, pink and black are claimed as a feature of the mark.

Mark Description: The mark consists of a pink and purple silhouette of the head and shoulder of a female inside a circular carrier that is half pink and half purple. Three pink stars appear inside the circular carrier to the right of the female silhouette. Below is the wording “LIVLUNA” where each letter “L” is in pink uppercase and the remainder of the letters are in lowercase purple, except for the dot over the letter “I”, which consists of a pink star. Further below is the wording “SMART LADIES KICKING A** AND SAVING THE WORLD IN STYLE” in black lowercase letters. The color white represents background and transparent areas only and is not part of the mark.

If applicant has any questions about this Office action, please contact the undersigned examining attorney.

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

Phone: 571.272.7187

Official Fax: 571.273.9106

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.