| To: | SMI Home Products, Inc. (SMISont@aol.com) |
| Subject: | TRADEMARK APPLICATION NO. 78178781 - SUNSCAPE - N/A |
| Sent: | 4/17/03 2:08:14 PM |
| Sent As: | ECom110 |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/178781
APPLICANT: SMI Home Products, Inc.
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CORRESPONDENT ADDRESS: SMI Home Products, Inc. 37 Anthony Road Glen Gardner NJ 08826
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom110@uspto.gov
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MARK: SUNSCAPE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: SMISont@aol.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/178781
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 704.01.
The recitation of services is unacceptable as indefinite because the wording “sales of tanning beds. Booths, and other similar ultraviolet devices used for tanning” is too vague. The term “sales” is unacceptable because it is unclear if the applicant is actually selling goods in class 11 or providing retail store services featuring these items in class 35. If the applicant is selling goods, the exact type of goods must be listed since “other similar ultraviolet devices” is not acceptable to indicate goods. If the applicant is providing retail store services featuring these items the applicant must state this. The applicant may adopt any of the following recitations, if accurate:
“Tanning beds.” International Class 11.
“Retail store services featuring tanning beds, tanning booths, and related ultraviolet devices used for tanning.” International Class 35.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP section 1402.06 and 1402.07. Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the present identification.
Additional Fees and Requirements
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods or services in each class and list the goods or services by international class with the classes listed in ascending numerical order. TMEP section 1403.01.
(2) The applicant must submit a filing fee for each international class of goods or services not covered by the fee already paid. 37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1403.01. Currently, the fee for filing a trademark application is $335.00 for each class of goods or services.
(3) The applicant must submit either:
(a) dates of first use and first use in commerce in each class and one specimen for each class. The dates of use must be at least as early as the filing date of this application. 37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above. 37 C.F.R. Sections 2.59(a) and 2.71(c).
INCREASE IN TRADEMARK FILING FEE
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accept applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.
A Final Rule amending the Rules of Practice in Trademark Cases to provide for this fee increase was published in the Federal Register on November 27, 2002 (67 Fed. Reg. 70,847 (2002)). <http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov/2002/02-30086.htm>>
The applicant asserts use of the mark in commerce for the goods or services and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods/services. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), for the same goods or services. 37 C.F.R. Section 2.34(b)(1). The applicant must delete one basis or divide the goods/services between the two bases, as appropriate.
To base the application on the applicant’s use of the mark in commerce the applicant must submit the following:
(1) A statement that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application on the application filing date;
(2) The date of the applicant's first use of the mark anywhere on or in connection with the goods or services;
(3) The date of the applicant's first use of the mark in commerce as a trademark or service mark; and
(4) One specimen for each class, showing how the applicant actually uses the mark in commerce. If the specimens are not filed with the initial application, applicant must submit a statement that the specimens were in use in commerce at least as early as the application filing date.
These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. Sections 2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. Section 1051(a); 37 C.F.R. Sections 2.34(a)(1) and 2.59(a).
NOTE: The applicant has met the requirements for a 1(b) application. However, if the applicant is applying under section 1(a), appropriate specimens must be submitted as indicated below. The applicant must also state for the record which basis they wish to apply under.
The applicant must submit acceptable specimens if they wish to proceed under section 1(a). The applicant could be providing goods or services. However, the specimens are not acceptable for either.
The specimens are unacceptable as evidence of actual service mark use because they do not specifically refer to the retail store services provided by the applicant. The applicant is a product advertisement for a specific tanning bed which is not acceptable to show use for the services. The applicant must submit specimens showing the mark as it is used in commerce. 37 C.F.R Section 2.58. Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.
The specimens do not show use of the mark for any goods identified in the application. Advertisements are not acceptable to show use for goods. If the applicant is selling tanning booths as a good in class 11, the applicant must three specimens showing use of the mark for the goods specified. 37 C.F.R. Sections 2.56 and 2.58. Appropriate specimens for goods include specimens that show the mark on labels for the goods, packaging for the goods, or on the goods themselves.
The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application. 37 C.F.R. Section 2.59(a); TMEP section 904.09.
The following is a properly worded declaration under 37 C.F.R. Section 2.20.
The substitute specimens were in use in commerce at least as early as the filing date of the application.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/ras/
Rebecca A. Smith
Trademark Attorney
Law Office 110
(703) 308-9110 ext.231
ecom110@uspto.gov (formal responses only)
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.