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:

 

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.

 

In order for the mark to be registrable, the applicant must respond to the following:

 

Signed Declaration Required

 

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:  “The mark is in use in commerce and was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date, and the facts set forth in the application are true and correct.”  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 or PDF image of a declaration under 37 C.F.R. §2.20 (see declaration paragraph below) together with a pen-and-ink signature.  37 C.F.R. §2.193(c)(1)(iii); 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; that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that 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)

 

 

 

 

Identification of Services

 

The identification of services is unacceptable as indefinite because some of the terms are overly broad so that the services are vague and/or could fall into a different international class.  Specifically, web site services and database services are assigned based on the nature of the information provided.  For instance, pet training is assigned to International Class 041, however, pet rescue services is assigned to International Class 039.  Suggestions and explanations are incorporated into the identification proposed below.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

 

Educational information and entertainment services in the nature of a web site featuring photographic, audio, video and text materials on the subjects of pet rescue services.  International Class 039;

 

Educational information and entertainment services in the nature of a web site featuring photographic, audio, video and text materials on the subjects of pets, namely, {specify pet information, e.g., “obedience training for pets” is assigned to International Class 041, “pet rescue services” is assigned to International Class 039, “breeding, selection of the animals and pets, care, grooming, feeding and nutrition” in International Class 044, etc.} pet care {assigned to International Class 044} animal behavior {assigned to International Class 044} and animal training, volunteer opportunities in the nature of {specify nature of volunteering, e.g., “volunteering at an animal shelter” is assigned to International Class 045}, pet shelters {assigned to International Class 045} and animal rescue groups {assigned to International Class 039}; providing an on-line searchable database featuring animal shelters, adoption organizations and pets available for adoption {assigned to International Class 045}.  International Class 041.

 

Educational information and entertainment services in the nature of a web site featuring photographic, audio, video and text materials on the subjects of breeding, selection of the animals and pets, pet care, grooming, feeding and nutrition, animal behavior.  International Class 044; and,

 

Educational information and entertainment services in the nature of a web site featuring photographic, audio, video and text materials on the subjects of pet shelters, volunteer opportunities in the nature of volunteering at an animal shelter; providing an on-line searchable database featuring animal shelters, adoption organizations and pets available for adoption.  International Class 045.

 

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 goods or services that are not within the scope of the goods and services recited in the present identification. 

 

For assistance with identifying 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.

 

Multiple Class Requirements

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies services that are classified in at least 5 international classes, however applicant paid the fee for only 2 classes.

 

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If applicant prosecutes this application as a combined, or multiple class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)            Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)            Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  Effective January 31, 2005, the filing fee for adding classes to an application is as follows:

 

(i)                  $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(ii)                $375 per class, when the fees are submitted with a paper response. 

 

Please note, the filing fee for adding classes to a TEAS Plus application is $275 per class, provided all the following requirements are satisfied:  (1) the fee(s) is submitted using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html or by examiner’s amendment; (2) applicant filed a complete TEAS Plus application; (3) applicant has filed and continues to file certain communications via TEAS (e.g., responses to Office actions); and (4) applicant maintains its authorization to receive Office communication via e-mail.  37 C.F.R. §§2.6(a)(iii), 2.22(a) and 2.23. 

 

If any of the TEAS Plus requirements are not satisfied, then applicant must submit a fee of $50 per class for all active classes in the application as filed; and the fee for adding any classes to the application shall be $325 per class if added via TEAS, or $375 per class if added in a paper response.  37 C.F.R. §§2.6, 2.22(b) and 2.23(b); TMEP §810.

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810; and,

 

(3)        For each additional class of goods and/or services, applicant must submit:

 

            (a)            dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

            (b)            one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

            (c)            a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

            (d)            verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

The specimens presently of record are acceptable with respect to all specified classes.

 

Classification of Services

 

If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 035, 039, 041, 044 and 045.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

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.

 

 

/Scott M. Sisun/

Trademark Examining Attorney

Law Office 110

571-272-5493

 

 

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.