UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/110600
MARK: NATIONAL CHILD LEARN
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: BOWLIN, JOHN
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
This letter responds to applicant’s communication filed on December 19, 2007. In an office action dated June 20, 2007, the examining attorney issued a §2(e)(1) refusal and required the applicant to amend its services. Applicant responded by attempting to seek registration on the Supplemental Register and amended its identification of services. The response has raised new issues that must be addressed by the applicant (see below) and, because applicant’s amendment to its recitation of services is unacceptable and remains indefinite, and because applicant’s amendment to the Supplemental Register is unacceptable, the §2(e)(1) refusal and identification requirement are maintained and continued.
Amendment Unacceptable - Would Exceed Scope of Goods and/or Services in Original Application
The proposed amendment to the identification cannot be accepted because it refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing. While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07. Therefore, the wording “promotional programs” should be deleted from the identification as they are not within the scope of “education in the field of banking”.
Section 1(b) Application Not Eligible for Supplemental Register Until Acceptable Allegation of Use Is Filed
A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed. 37 C.F.R. §§2.47(d), 2.75(b), 2.76(b), (c); TMEP §§815.02, 1102.03. When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§206.01, 816.02, 1102.03, 1104.01.
To amend the application filing basis from intent to use under Section 1(b) to use in commerce under Section 1(a), applicant must file, prior to a mark’s approval for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76. 15 U.S.C. §1051(c); 37 C.F.R. §§2.35(b)(8) and 2.76; TMEP §§806.01(b), 1103.
The following must be submitted in an amendment to allege use to amend an application to use in commerce:
(1) The following statement: “The mark is in use in commerce”;
(2) The date of first use of the mark anywhere on or in connection with the goods and/or services;
(3) The date of first use of the mark in commerce as a trademark or service mark;
(4) A specimen showing actual use of the mark in commerce for each class of goods and/or services for which use is being asserted; and
(5) A filing fee of $100 per class for each international class of goods and/or services for which use is being asserted (current fee information should be confirmed at http://www.uspto.gov).
(6) Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.
37 C.F.R. §§2.56, 2.59(b), 2.76(b)(2); TMEP §§904.09, 1104.09(e).
Amendments to allege use can be filed online at http://www.gov.uspto.report/teas/index.html.
Assistance
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.
/James W. Stein/
Trademark Examining Attorney
Law Office 107
Phone No. (571) 272-3056
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 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.