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  77/004878

 

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

 

No Conflicting Marks Found

 

The examining attorney searched the Office records and found no similar registered or pending mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  The applicant, however, must respond to the following requirements.

 

Identification of Goods and Services

 

The wording “interactive maps; computer software, databases; producing maps and software; research and consulting in the fields of maps, software and databases” in the identification of goods and services is indefinite because it must further specify the goods and services and/or too broad because it could include goods and services classified in other international classes.  TMEP §§1402.01 and 1402.03.  Consultation services are classified by the subject matter of the consultation and can be classified in several classes.  Likewise, research is generally classified according to type of research, e.g., business, financial, scientific.  The applicant may adopt the following identification of goods and services, if accurate: 

 

Interactive multimedia computer program containing maps; computer software for use in [specify the function of the program, e.g., word processing, and if software is content- or field-specific, the field of use], and databases, namely, [individually specify each item, e.g., electronic database in the field of [indicate subject matter of database] recorded on computer media]; in International Class 9

 

Maps; in International Class 16

 

Consultation in the field of computerized database management; business research in the field of computer software; in International Class 35

 

Printing maps; in International Class 40

 

Scientific research and consultation in the field of mapping; computer software consultation; computer software development; providing an interactive web site in the field of interactive maps; in International Class 42

 

Consulting services in the field of maintaining the security and integrity of databases; in International Class 45

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. 

 

Multi-Class Application

 

The application identifies goods/services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to one class, which is the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application then the applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)   For each additional class of goods and/or services, the applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

If the applicant submits the outstanding fees with a paper response, then the applicant must submit $375 for each additional class.  However, if the applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then the applicant must submit $325 for each additional class.  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

Please note that the specimens of record are not acceptable for any class.

 

Specimen Unacceptable For All Goods

 

The current specimen of record comprises a web page printout and is unacceptable as evidence of actual trademark use because it constitutes advertising and does not show use of the mark in connection with the goods or on the packaging for the goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §904. 

 

Advertising material is generally not acceptable as a specimen for goods.  Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use.  Similarly, informational inserts are generally not acceptable to show trademark use.  In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).  However, an instruction sheet may be an acceptable specimen. In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  See TMEP §904.07 regarding package inserts.

 

The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods:  advertising circulars and brochures; price lists; announcements; publicity releases; listings in trade directories; and business cards.  Moreover, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods.  These materials include all papers whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties and business stationery.  See In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); In re Bright of America, supra; Varian Associates v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958).  As to display of trademarks on company uniforms, see In re McDonald’s Corp., 199 USPQ 702 (TTAB 1978); Toro Manufacturing Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969).  TMEP §904.05.

 

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(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).  The following is a properly worded declaration under 37 C.F.R. §2.20:

 

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 this 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)

 

If the applicant cannot satisfy the above requirements, the 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.  Should the applicant amend the basis to Section 1(b), however, registration cannot be granted until the 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.  Where an application is based on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The 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.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2) and 2.35(b)(1); TMEP §806.01(b). 

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  15 U.S.C. §§1051-1052 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Specimen Unacceptable For All Services

 

The current specimen of record comprises a web page printout and is unacceptable as evidence of actual service mark use because the specimens do not reference the sale or advertising of the identified services.  An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §904.11.  Examples of acceptable 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. 

 

Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought.  A specimen that shows only the mark, with no reference to the services, does not show service mark usage. In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to decorated Christmas tree that bear the mark “TREE ARTS CO. and design” and the applicant’s location, but make no reference to services, fail to show use for “design services in the nature of designing handcrafted, permanently decorated Christmas and designer trees”); In re Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994) (labels affixed to packaging of valves do not show use of mark for custom manufacture of valves); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing only the mark do not show use to identify “association services, namely promoting the interests of individuals who censor the practice of drinking and driving”); In re Riddle, 225 USPQ 630 (TTAB 1985) (cutouts showing mark with no reference to the services held unacceptable for automotive service center); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (iron-on transfer clothing patches in the form and shape of a cartoon animal mark, distributed as free promotional items to restaurant customers at counters, held insufficient to identify restaurant services).  See also TMEP §1301.04(c) and cases cited therein.  TMEP §1301.04(b).

 

Therefore, the applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, the applicant must also verify the amended dates.  37 C.F.R. §2.71(c).  The following is a properly worded declaration under 37 C.F.R. §2.20:

 

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 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)

 

If the applicant cannot satisfy the above requirements, the 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.  Should the applicant amend the basis to Section 1(b), however, registration cannot be granted until the 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), the applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: 

 

The 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).

 

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

 

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

 

 

/LeighLowry/

Leigh A. Lowry

Examining Attorney

U.S. Patent and Trademark Office

Law Office 104

(571) 272-9725

 

 

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.