To: | Abraham, Douglas (info@annietunheim.com) |
Subject: | TRADEMARK APPLICATION NO. 77620336 - BESS - N/A |
Sent: | 2/12/2009 3:49:34 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/620336
MARK: BESS
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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: Abraham, Douglas
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 2/12/2009
Search of Office Records
Consent of a Living Individual
Applicant must clarify whether the name in the mark identifies a particular living individual.
If the name in the mark identifies a particular living individual, then applicant must submit the following:
(1) a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO; and
(2) a statement that “BESS identifies a living individual whose consent is of record.”
However, if the name in the mark does not identify a living individual, then applicant must submit a statement that “BESS does not identify a living individual.” Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.
Specimen Unprintable or Illegible
The specimen is not acceptable because the digitized image does not clearly show the applied-for mark in use in commerce for the identified goods and/or services. 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 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Therefore, applicant must satisfy one of the following:
(1) Submit a true and unaltered copy of the originally submitted specimen, and a statement by the person who transmitted the application to the Office that the resubmitted specimen is a true copy of the specimen that was submitted with the application. TMEP §§904.02(a)-(b).
(2) Submit a substitute specimen showing use of the mark for each class of goods and/or services based on used in commerce, and 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 at least as early as the filing date of the application.” 37 C.F.R. §2.59(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.
If applicant cannot satisfy one of 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.
Pending a proper response, registration is refused because applicant has not provided evidence of use in commerce of the applied-for mark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
If applicant cannot comply with the requirement for the submission of an acceptable specimen for the Section 1(a) basis asserted, applicant can substitute a different basis if applicant can meet the requirements for the new basis. See TMEP §806.03.
In this case, applicant may wish to amend the application to assert a Section 1(b) basis.
The application was filed under Trademark Act Section 1(b); however, it does not include the required verified statement of applicant’s “bona fide intention to use the mark in commerce.” 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§804.02, 806.01(b). Therefore, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:
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 application filing date.
Declaration for Substituting Basis
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Declaration for 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 at least as early as the filing date of the application; 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)
Response
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) written 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). Telephone responses will not incur an additional fee. NOTE: In addition to the above, applicant 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).
/Angela Gaw/
Trademark Examining Attorney
Law Office 104
Phone: (571) 272-1347
Fax: (571) 273-9104
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.