Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77112567 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Dear Sir:

 

            This is in response to an Official Action mailed February 14, 2008 in which Applicant’s specimen was not considered to “reference credit card payments or the transmission thereof”.

 

            The services in this application are:  “providing electronic transmission of credit card transaction data and electronic payment data via the internet”.  (The services were amended from --provision and operation of a web portal for access and management of user’s credit card data--.)

 

            Applicant provides a web portal where credit card transaction data is made available and where it is possible to make electronic payment.  The specimen which was submitted on December 28, 2007 is the sign-in page for that portal.   As shown on promotional literature attached, detailed credit card billing showing detailed information on fuel type, gallons pumped, price per gallon, and purchase location is provided.   While the currently attached information does not show the trademark applied for herein, it references its “SUPERFLEET card”, “SUPERFLEET account” and “SUPERFLEET program”, and when a customer is approved for this credit card service, he obtains his credit card bill and detailed transaction data by accessing the web portal, i.e., the specimen that was submitted on December 28, 2007, where the mark SUPERFLEET MANAGER is shown.   The specimen of record shows use of the mark as it is actually used in the course of performing the service. 

 

            The specimen of record should therefore be accepted.  As indicated in TMEP 1301.04(b), “(w)here the record shows that the mark is used in performing (as opposed to advertising) the services, a reference to the services on the specimen itself may not be necessary.  In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) (computer printouts showing mark GLOBAL GATEWAY found acceptable to show use of mark to identify data transmission services accessed via computer, because they show use of mark as it appears on computer terminal in the course of rendering the services).” 

 

            TMEP 1301.04(b) further states that when considering whether a specimen is acceptable, the Examiner should consider Applicant’s explanation, along with other evidence in the record that shows how the mark is actually used.  The explanation of how the services are rendered along with the information that is submitted herewith supports the specimen of record.  Therefore, Applicant’s attorney believes that the specimen of record is acceptable as evidence of use of the mark in connection with the stated services.

 

            Favorable action is solicited.

 

                                                                                    Respectfully submitted,

 

                                                                                    EMCH, SCHAFFER, SCHAUB

                                                                                        & PORCELLO CO., L.P.A.

 

                                                                                    Mark C. Schaffer

 

                                                                                    Mark C. Schaffer

 

MCS:RD

Attachments

EVIDENCE
Evidence in the nature of pages from Applicant's website. has been attached.
Original PDF file:
evi_72240124141-101909717_._SUPERFLEET_MANAGER.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

SIGNATURE(S)
Response Signature
Signature: /Mark C. Schaffer/     Date: 03/04/2008
Signatory's Name: Mark C. Schaffer
Signatory's Position: Attorney of record

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77112567
Internet Transmission Date: Tue Mar 04 10:23:28 EST 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200803041023284
33968-77112567-42070eea4d58eae137d374a3d
84913396-N/A-N/A-20080304101909717332