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: 9/19/2007

 

The assigned trademark examining attorney has reviewed the statement of use and has determined the following:

 

Unacceptable Specimen

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the statement of use.  A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b). 

 

In the present case, the specimen consists of a photograph of a cell phone screen upon which the mark is displayed.  However, based on this photograph, it is uncertain whether potential consumers would perceive the proposed mark as a source indicator for applicant’s goods, namely, “downloadable software for use as game programs on mobile telephones; computer programs for playing games recorded on mobile telephones; computer game programs pre-recorded on cartridges, discs, and cards; downloadable software for use as computer game programs; electronic game programs; interactive multimedia computer game programs featuring downloadable sound and downloadable digital music provided from the internet; downloadable software for use as screen savers for computers or mobile phones; downloadable software for use as ring tones for mobile phones; pre-recorded magnetic data carriers featuring games; pre-recorded digital video discs featuring games; downloadable electronic publications in the nature of entertainment in the field of animated cartoons or action/adventure entertainment; and electronic publications, namely, journals or newsletters in the field of entertainment featuring computer games, video games, cartoons or general entertainment recorded on computer media”.  The specimen does not show the proposed mark in actual use in commerce on the Class 9 goods recited in the application or on the packaging for the recited goods.

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of goods in the statement of 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 expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); 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. 

 

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 and 1127; 37 C.F.R. §§2.56 and 2.88.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

Applicant’s Response

 

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.

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

 

 

 

/Y. I. Lee/

Y. Isadora Lee

Trademark Examining Attorney

Law Office 107

Phone: 571-272-3897

 

 

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 9/19/2007 FOR

APPLICATION SERIAL NO. 77005966

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77005966&doc_type=OOA&mail_date=20070919 (or copy and paste this URL into the address field of your browser), or visit http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 9/19/2007.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.