| To: | Deluxe Laboratories, Inc. (latm2@gtlaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 77227410 - DELUXE - 092807-01030 |
| Sent: | 1/8/2009 4:08:27 PM |
| Sent As: | ECOM110@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/227410
MARK: DELUXE
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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: Deluxe Laboratories, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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: 1/8/2009
The prior Final Office action issued in regard to this file is withdrawn. The Applicant must now respond to the issues discussed below:
The following issues were discussed in communication with Ms. Christina Liu, Esq., on January 8, 2009.
The Applicant must now respond to the following requirements:
Requirements
Applicant may substitute the following wording, if accurate:
Class 35:
Packaging for others.
Class 40:
Operation of laboratories for the processing of motion picture films; Video transfer, namely, providing color correction and conversion of motion picture film to video film; Video transfer, namely, film to tape digital transfer services namely, transferring motion picture film content to DVDs.
Class 42:
Design and development of computer software; product research and development; hosting the websites of others; website design services for others; digital watermarking; custom packaging design services for sound, video, and data recordings; graphic design services for print media in the field of entertainment; DVD menu packaging design for others; design for others of music, video and DVD packaging; quality control for others of the duplication, replication and distribution of digital film and video; Content creation services, namely, authoring and development for others of interactive computer software for the integration of text, audio, graphics, still images and moving pictures into an interactive delivery for multimedia applications; Design and development of multimedia products, namely, DVD menu design for others; Retrieving digital files representing film, video, audio, picture and document content, for post production industries, namely, ________ (further specify/define the services by common commercial name); Conversion of data or documents from physical to electronic media; Authoring services for DVDs, HD DVDs, and optical and magneto-optical DVD's.
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. See TMEP §1402.04.
Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the services by International class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each International class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); 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 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, 904.09, 1403.01 and 1403.02(c).
The specimens presently of record are acceptable with respect to classes 40 and 42.
Specimen Requirement Class 35 Only
The application is incomplete because it does not include the required specimen showing use of the applied-for mark in commerce for the Class 35 services identified in the application. An application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Therefore, applicant must submit the following:
(1) A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.56(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of 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. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
Amendment to Trademark Act Section 1(b) Advisory:
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).
/Thomas M. Manor/
Trademark Examining Attorney
Law Office 110
Phone : (571) 270-1519
Fax. No. (571) 273-9110
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.