Offc Action Outgoing

This is in response to applicant’s correspondence of March 26, 2010. In the office action issued on March 9, 2010, the examining attorney required applicant to provide a substitute specimen showing use of the mark with the services identified in the application.

In response applicant argued that its specimen is acceptable. The examining attorney has carefully considered applicant’s arguments, but is not convinced that the specimen shows use of the mark in connection with the services identified. Therefore, a pplicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SPECIMEN REQUIRED

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the services specified in the statement of use. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of services specified in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).

In this case, the specimen shows that applicant is preparing for an enshrinement ceremony that will take place in the summer of 2010. Applicant has identified its services as:

Educational entertainment services, namely, a basketball museum and library, basketball games, basketball contests, basketball camps and clinics and enshrinement Ceremonies

The specimen makes no reference at all to the services identified as “a basketball museum and library, basketball games, basketball contests, basketball camps and clinics” and has only shown that it has begun to prepare for its first “enshrinement ceremony.”

The examining attorney notes that applicant has admitted that the ceremony has not yet been held, but argues that the specimen should somehow be sufficient. However, preparing for the ceremony is not the same thing as holding the ceremony, any more than preparing a speech is the same as giving the speech. While preparation is an essential step, it is not the completion of the act. The services here are not identified as “preparing for ceremonies.” The services are identified as “enshrinement ceremonies.” The specimen must show that the ceremony was held prior to the filing of the statement of use. Until there is a ceremony, the services have not been offered under the mark and there has been no use of the mark with those services.

For these reasons, the specimen submitted with the Statement of Use is not acceptable. Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the statement of use; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05. If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark for the identified services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 904.07(a).

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88; TMEP §1109.17.

Applicant is encouraged to submit its response online. If it does, the online response form should launch the proper declaration to sign with the response, when applicant elects “yes” in response to item “Do you want to submit a Signed Declaration?” If the applicant provides a paper response to this office action, the following is a sample declaration for a verified substitute specimen for use in a paper response:

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 therefrom, declares that the substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of 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)

The foregoing requirement is continued and made FINAL.

RESPONSE GUIDELINES – FINAL REFUSALS

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Fred Carl III/

Law Office 108

571 272 8867 voice

571 273 9108 fax for official communication only

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.