Offc Action Outgoing

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  77/036719

 

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

 

Search Results

 

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

 

Claim of Ownership

 

If applicant is the owner of U.S. Registration Nos. 3156224, 0853645, and 0870605, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 0575167; 0853645; 0870605; 2136562; 3156224.

 

Specimen Unacceptable for Classes 37 and 42

 

The specimens for Classes 37 and 42 are not acceptable because they do not show the applied-for mark in use in commerce.  An application based on Section 1(a) 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, 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. 

 

The specimen consists of a scanned label and is unacceptable as evidence of actual service mark use because it does not show the mark as it is used in connection with the services.  Thus, it fails to show proper use of the applied-for mark in the sale or advertising of the services. 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark in use in commerce for the services specified in the application; 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 at least as early as the filing date of the application.”  37 C.F.R. §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).

 

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).

 

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.

 

Specimen Advisory

 

Additionally, the specimen shows use of the federal trademark registration symbol ® with the applied-for mark.  However, USPTO records do not show that the mark is registered for the specific goods and services.  Applicant may not use the federal registration symbol until its mark is registered in the USPTO.  After registration, applicant may use this symbol in connection with the specific goods and/or services listed in the registration.  TMEP §§906 and 906.02.

 

The above information is advisory only.  Applicant need not respond to this issue.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because it fails to identify the goods with enough specificity for the Office to classify them.  Applicant may adopt the following identification of goods, if accurate: 

 

Class 007: Mechanized feeders and waterers for livestock and poultry, feed filling machines, power-operated discharge machines for bulk storage bins of dry particulate material; power-operated manure removal equipment, namely, conveyors and scrapers; mechanized egg collectors for collecting and conveying eggs.

 

Class 009: Scales; computer software for use in controlling, monitoring and analyzing poultry and livestock production operations and generating data; egg counters.

 

Class 011: Incinerators, electric heaters, and ventilation systems for poultry and livestock comprised of electric fans, shutters, inlets, curtain winches, evaporative cooling units, electronic controls and manure drying systems.

 

Class 019: Poultry nest pads.

 

Class 021: Brooders, animal activated feeders and animal activated waterers for livestock and poultry.

 

TMEP §1402.01.

 

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, 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 and classifying 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.

 

 

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.

 

/Michael Litzau/

Michael Litzau

Trademark Examiner

Law Office 104

phone: 571-272-8157

fax: 571-273-8157

 

 

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.