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  77/101045

 

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

 

WRONG FORM APPARENTLY USED

 

Applicant has used a form for a certification mark.  However, from the appearance of the file, it looks like applicant instead intended to apply for protection as a service mark.  Applicant must clarify whether it is applying for a certification mark or a service mark.  A certification mark is not the same as a trademark or service mark, i.e., it is not used to identify the source of goods and/or services.

 

A “certification mark” is a mark used with products or services of persons other than the owner of the mark, to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services, or to certify that the work or labor on the goods or services was performed by members of a union or other organization.  Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1306.  However, the mere fact that applicant intends to be a regional airline does not mean the mark is a certification mark.

 

It is far more likely that applicant wishes to register the mark for its own airline services as a service mark.  A “service mark” is a word, name, symbol, device or any combination of these used by a person, or which a person has a bona fide intention to use in commerce to identify services and distinguish them from the services of others.  In other words, a service mark serves as a source-identifier for specific services.  Trademark Act Section 45, 15 U.S.C. §1127; TMEP §1301.

 

Applicant should resubmit the application, being careful to choose the electronic form for filing for registration of a trademark or service mark, rather than as a certification mark.

 

INDEFINITE RECITATION OF SERVICES

 

The recitation of services is unacceptable as indefinite because it uses broad language.  Amendment and proper classification are required.  TMEP §1402.11.

 

Also, the applicant should not use its service mark in the recitation of services.

 

The applicant may adopt the following recitation, if accurate:

 

Airline transportation services. In class 39.

 

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 services that are not within the scope of the services recited 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.

 

CITIZENSHIP OF APPLICANT

 

The applicant must indicate his national citizenship for the record.  Trademark Act Section 1, 15 U.S.C. §1051; 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.

 

SECTION 1(a) AND SECTION 1(b) ASSERTED FOR THE SAME SERVICES

 

Applicant asserts use of the mark in commerce for its services, and that it has a bona fide intent to use the mark in commerce for the same services.  Applicant must delete one basis or divide the services between the two bases, as appropriate. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

REQUIREMENTS FOR SECTION 1(a) BASIS

 

An application based on use of the mark in commerce must include the following:

 

(1)   The following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date”;

 

(2)   The date of first use of the mark anywhere on the goods or in connection with services;

 

(3)   The date of first use of the mark in commerce as a trademark or service mark;

 

(4)   One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce).  If a specimen was not submitted with the initial application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date.”

 

(5)   Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20 and 2.33, of the above statements and dates of use. 

 

15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

Note that the applicant has not supplied dates of use nor any specimen of use.  If the mark was not in use in commerce as of the application filing date, applicant should delete the Section 1(a) basis. 

 

REQUIREMENTS FOR SECTION 1(b) BASIS

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:

 

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.

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

Again, the applicant may not apply under both Section 1(a) and Section 1(b) for the same services.

 

UNSIGNED APPLICATION

 

The Office will presume that applicant will rectify its filing so that it is clear that he is applying to register a service mark.

 

The application was not signed and verified, which are application requirements.  15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34.  Therefore, applicant must submit, in a signed affidavit or declaration under 37 C.F.R. §2.20, the following statement:  “As of the application filing date, the mark is in use in commerce and was in use in commerce on or in connection with the specified goods or services listed in the application; as of the application filing date, applicant had a bona fide intention to use the mark in commerce on or in connection with the specified goods or services not yet in use as listed in the application; that the facts set forth in the application are true and correct.”  37 C.F.R. §2.193(c)(1)(iii); TMEP §804.02.

 

If applicant responds to this Office action via TEAS, applicant may satisfy this requirement by adding the required statement (specified immediately above) to the TEAS response form, checking the box for a “signed declaration,” and properly signing the form by either (1) choosing an electronic signature consisting of any combination of letters, numbers, spaces and/or punctuation marks, preceded and followed by the forward slash (/) symbol (e.g., /johndoe/), and entering this in the signature block on the response form, or (2) attaching a JPG pr PDF image of a declaration under 37 C.F.R. §2.20 (see declaration paragraph below) together with a pen-and-ink signature.  TMEP §804.05. 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following declaration at the end of the response, properly signed and dated:

 

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 any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that, as of the application filing date, the mark is in use in commerce and was in use in commerce on or in connection with the specified goods or services listed in the application; that, as of the application filing date, applicant had a bona fide intention to use the mark in commerce on or in connection with the specified goods or services not yet in use as listed in the application; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

 

In order to properly “sign” a TEAS form, applicant can either (1) choose an electronic signature consisting of any combination of letters, numbers, spaces and/or punctuation marks, preceded and followed by the forward slash symbol (/) (e.g., /john doe/), and enter this in the signature block on the TEAS form, or (2) attach a JPG or PDF image of a declaration under 37 C.F.R. §2.20, together with a pen-and-ink signature.  37 C.F.R. §2.193(c)(1)(iii); TMEP §804.05.

 

SEARCH CLAUSE

 

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

 

GENERAL INFORMATION

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).

 

“TMEP” refers to the Trademark Manual of Examining Procedure (3rd ed., Rev. 1, June, 2002), available on the United States Patent and Trademark Office web site at www.uspto.gov.

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney

 

 

 

/Steven Foster/

Steven Foster, Trademark Attorney

Law Office 106

(571) 272-9318

Fax number for the Law Office: (571) 273-9106

 

 

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.