UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT as to Class 9, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/13/2007

 

 

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

 

•            Search of Office records.

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

However, the applicant must respond to the following.

 

•            Failure-to-function refusal.

The material submitted as a specimen of use is unacceptable because it fails to show use of the mark functioning as such on the applicant’s goods.  Although there is evidence of use of the mark on software installation and training (i.e., services), there is no evidence of use of the mark on the software itself (i.e., goods).  A screenshot of the software in action (or of a “download” hyperlink), or a picture of an installation disc or a packaging box, would suffice to evidence use as to goods as long as the mark is prominently displayed.

The applicant must submit a specimen showing the mark, as used in commerce, on the actual goods.  37 C.F.R. §2.56.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, because the record does not show use of the proposed mark as a trademark.  TMEP §§904.11 and 1301.02 et seq.  The examining attorney will reconsider this refusal if the applicant submits a specimen showing use of the mark on the goods.

The applicant must also verify, with a declaration* under 37 C.F.R. §2.20 or affidavit, that the substitute specimen(s) was/were in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with a declaration^* under 37 C.F.R. §2.20 or affidavit.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1104.09(d).

If the applicant cannot comply with the requirement for the §1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.  In the instant case, the applicant may wish to amend the application to assert a §1(b) basis.

 

•           Advisory.

The stated refusal/requirement pertains only to the indicated class(es) [or to the indicated goods/services] and does not bar registration in the remaining class(es) [or as to the remaining goods/services].  Failure to respond to a refusal/requirement that pertains to fewer than all classes [or fewer than all goods/services] in an application no longer results in abandonment of the application in its entirety, but this scenario is nevertheless better avoided.

The applicant may respond to the stated refusal/requirement by doing one of the following:

(a)  amending the application to delete the class(es) [or the goods/services] to which the refusal/requirement pertains;

(b)  traversing the refusal/requirement of the application as a whole; or

(c)  filing a request to divide the application, such that the mark may be published for opposition in the class(es) [or as to the goods/services] to which the refusal/requirement does not pertain. 

37 C.F.R. §2.87; TMEP §§1110 and 1403.

 

•           Responding to this Office Action.

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  This Office cannot aid in the selection of an attorney.

To respond formally to this Office Action, the applicant is strongly urged to utilize this Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/eTEASpageD.htm.

(If the applicant responds using regular mail, he/she is advised that such correspondence must bear the serial number, law office, and examining attorney’s name on the upper right corner of each page.  All Trademark-related paper mail––except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents––must be sent to: Commissioner for Trademarks • P.O. Box 1451 • Alexandria, VA 22313-1451; the undersigned’s fax number is (571) 273-9212.)

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.

To respond informally to this Office Action, or for inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney via e-mail: 

brendan.regan@uspto.gov

/J. Brendan Regan/

Examining Attorney

Law Office 113

571.272.9212

   

Advisory for TEAS-Plus filers––TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS-Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office Actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) Amendments to Allege Use; (7) Statements of Use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  In addition to the above, TEAS-Plus applicants must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).