Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77757656 TANTRUM(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=77757656) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The applicant, ProSlide, urges that the objection to the specimen in class 40 can be withdrawn.  The examiner objected, “The specimens make no reference to custom manufacturing services [the services recited in class 40].”

 

TMEP 1301.04(c) explains:

 

Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create an association between the mark and the services. To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services. A general reference to the industry may be acceptable. … 

 

[A] copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used.

(Citations omitted.)

 

In this case, ProSlide has submitted something analogous to an actual letter: an example of an actual contract with a customer for the service of custom building a waterslide.  ProSlide’s waterslides are very large waterslides installed at waterslide parks, and there is no assembly line for these products.  As part of each project, many meetings and site visits are held to explore the customer’s needs, the limitations of the site itself, as well as the interaction of the waterslide with other installations at the facility.  ProSlide manufactures each waterslide according to a specific plan uniquely designed for that particular customer.  Thus, each manufacture of a TANTRUM waterslide is in fact a custom manufacture, and ProSlide therefore offers, sells, and performs custom manufacturing services in respect of each sale of a TANTRUM waterslide.  As evidenced by the contract that has been filed, customers understand that they are paying for this custom manufacturing service as a separate service encompassed by the overall project costs.

 

Because the mark is used in contracts that spell out the nature of the services, it is believed that the submitted contract may be accepted as a specimen for the services in class 40.

SIGNATURE(S)
Response Signature
Signature: /rmlabarge/     Date: 10/05/2012
Signatory's Name: Richard M. LaBarge
Signatory's Position: attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77757656
Internet Transmission Date: Fri Oct 05 10:42:58 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201210051042582769
90-77757656-490708b29f0724077407260e1b84
54ccf4c-N/A-N/A-20121005104033877514