UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/178781

 

STATUS-FINAL OFFICE ACTION

 

This letter is in response to the applicant’s communication filed on October 21, 2003.  Therein, the applicant amended the listing of services and deleted the 1(b) basis. However, the applicant has not provided acceptable specimens since the specimens are not acceptable for the class 35 distributorship services. . As a result, this requirement is made final.

 

Specimens

 

The specimens are unacceptable as evidence of actual service mark use because they do not specifically refer to the distributorship services provided by the applicant. The specimens are advertisements for the applicant’s goods and do not reference any distributorship services. The applicant indicates in their response that the substitute specimens provided are labels for the products. These would be acceptable to show use for goods but not for services.  The applicant must submit specimens showing the mark as it is used in commerce in reference to the services provided.  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.  TMEP section 1301.04.  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 905.10.

 

 

Declaration

 

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)

 

 

Applicant’s Options

 

Please note that the only appropriate responses to a final refusal are either:  (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/ras/

Rebecca Smith

Trademark Attorney

Law Office 110

(703) 308-9110 x231

ecom110@uspto.gov (for 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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.