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:

 

The Amendment to Allege Use is unacceptable as the mark appears to be used in connection with a video game, rather than computer game software.

 

Specimen Unacceptable

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the amendment to allege use.  An amendment to allege use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services specified in the amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.76(b)(2); TMEP §§904, 904.07(a), 1104.09(e). 

 

In this case, the specimen refers to a game for Nintendo, which is a video game system, rather than being used with computers. 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of goods specified in the amendment to allege use; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the filing of the amendment to allege use.”  37 C.F.R. §2.59(b)(1);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).

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like 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 document or any registration resulting there from, declares that the substitute specimen was in use in commerce prior to the filing of the amendment to allege use; 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)

 

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. 

 

If applicant cannot satisfy the above requirements, applicant may withdraw the amendment to allege use and assert use at a later date when appropriate specimens are available.  The fee for the amendment to allege use will not be refunded.  37 C.F.R. §2.76(h); TMEP §1104.10.  However, should applicant withdraw the amendment to allege use, registration cannot be granted until applicant 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. 

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.76; TMEP §§904, 904.07(a), 1104.09(e).

 

 

Office 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.

 

 

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.

 

 

 

Toby E. Bulloff

/Toby E. Bulloff/

Trademark Examining Attorney

Law Office 117

p: (571) 270-1531

f: (571) 270-2531

 

 

 

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.