Offc Action Outgoing

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: 5/30/2010

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant 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.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, applicant should note the following refusal.

 

Refusal To Register—Does Not Function As A Service Mark

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043 (TTAB 1989); In re The Signal Cos., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§904.07(b), 1301.02 et seq.

 

Applicant applies the mark to advertising services. The applied-for mark, as shown on the specimen, does not function as a service mark because the mark is being used to advertise applicant’s own services.  To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application.  Therefore, applicant must submit a substitute specimen showing the mark being used as a source indicator for advertising services. Potential purchasers who are looking for advertising services for their own products must view the mark as being a source indicator for someone who provides those services.

 

Applicant also applies the mark to a website providing information in the field of automotive maintenance and repair services.  The mark does not appear to function as a source indicator for the “informational services” being offered by applicant because there is no information provided on the site. The specimen shows the mark being used on a website advertising applicant’s SERVICESTAR services.  This is not sufficient to show the mark being used in connection with general information services.

 

To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. Use of a mark to convey promotional information, rather than to identify and indicate the source of the services, is not service mark use. The specimen shows the mark being used to advertise applicant’s automotive services; therefore, it does not function as a source indicator for applicant’s information services.

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for the services specified in the application; 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 at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  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 sale or advertising of the services.  See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

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.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Applicant must respond to the requirement(s) set forth below.

New Drawing Required

Applicant must submit a new drawing with the trademark registration symbol deleted because it is not part of the mark.  See TMEP §§807.02, 807.14(a).

 

Color Claim and Description

Applicant must provide a concise color claim and mark description using generic color names must be used to describe the colors in a color claim and mark description, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii). 

The following color claim is suggested:  The colors white, blue, yellow and gray are claimed as a feature of the mark.

The following mark description is suggested:  The mark consists of a white, blue, yellow and gray shooting star with the word SERVICE appearing in blue, white and gray.

Disclaimer Required

 

Applicant must insert a disclaimer of SERVICE in the application because it is merely descriptive when used in connection with information in the field of automotive repair services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  Applicant applies the mark SERVICE to information in the field of automotive repair services.  The term “service” is merely descriptive of the subject matter of the website and must be disclaimed.

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “SERVICE” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark.  TMEP§1213.  An unregistrable component of a mark includes wording and designs that are merely descriptive of the goods and/or services, and is wording or an illustration that others would need to use to describe or show their goods and services in the marketplace.  15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1212.02(a), 1213.03 et seq.

 

 

TEAS Plus Applicants

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

/Saima Makhdoom/

Attorney

Law Office 101

U.S. Patent and Trademark Office

Telephone:  (571) 272-8802

Facsimile:  (571) 273-8802

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77949548) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 5/30/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77949548&doc_type=OOA&mail_date=20100530 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 5/30/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.