Offc Action Outgoing

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  78/197245

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

INDEFINITE IDENTIFICATION OF SERVICES

 

The recitation of services is unacceptable as indefinite because it does not state what applicant does with regard to the employee benefit plans.  The applicant may adopt the following recitation, if accurate:  Administration of employee benefit plans. In class 36.  TMEP §1402.11.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

UNACCEPTABLE DRAWING

 

The drawing is not acceptable because it will not reproduce satisfactorily. Note that no grayish tones are permitted in drawings, which must be displayed in all black and white. The current drawing has gray tones. The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

Also, the “TM” designation is not part of the mark, and the applicant should delete this from the drawing.  TMEP §§807.04 and 807.15.

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

UNACCEPTABLE SPECIMEN

 

The specimen does not show use of the mark for any services identified in the application.  The applicant must submit a specimen showing use of the mark for the services specified.  37 C.F.R. §2.56; TMEP §904.  Note that the current specimen is nothing more than another version of the mark in gray and green, but shows no use in connection with the services.

 

A specimen is unacceptable if it does not show use of the service mark in relation to the identified service.  Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977).  The specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); TMEP §§1301.04 et seq.  Therefore, the specimen must show the mark in reference to the particular services identified.

 

 The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that 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 §904.09.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09. 

 

SEARCH CLAUSE

 

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. §1052(d).  TMEP §704.02.

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

Fee increase effective January 1, 2003

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 accord a filing date to 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 for classes added on or after January 1, 2003.

 

 

 

 

 

/Steven Foster/ Trademark Attorney

Law Office 106

(703) 308-9106 Ext. 123

Fax number for the Law Office: (703) 746-8106

E-mail responses: ecom106@uspto.gov

 

 

 

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.