Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  78/261631

 

The following issues were discussed in communication with Ed Komen on December 16, 2003.

 

Identification and Classification

The recitation of services is unacceptable as indefinite because it does not describe the nature of the services with sufficient specificity.  Please note that the identification requirement is limited to those services that appear in bold text; the services that are not noted in bold text are acceptable.  If applicant should fail to respond to this Office action within the six month time limit, then the services in bold text will be deleted from the application and the application will proceed only for the remaining services.  The applicant must amend the recitation to specify the common commercial name of the services.  TMEP §1402.11.  In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as "services in connection with..." or "such as" or "including" or "and like services" or "systems" or "products" or "concepts" or "not limited to....”  TMEP §§804.08(c) and 1301.05.

 

If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.  TMEP §1402.11.  Please note that the vast majority of services have a common commercial name.  Acceptable common commercial names are included in the Trademark Acceptable Identification of Goods & Services Manual available free of charge at the Office web site located at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. 

 

However, the applicant may adopt the following identification of services, if accurate [underlining indicates additions]:

 

Public opinion polling services in the field of relationships; providing public opinion polling information in the field of relationships in 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. §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 recitation.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

 

 

Specimen

A.  If any names other than that of applicant appear on the specimen which indicate that another party may have ownership rights in the mark, such as CBS.COM, then applicant must explain:  (1) the relationship between applicant and the party designated by that name; (2) whether that party has any rights in the mark; and (3) how applicant controls any use of the mark by that party.  Trademark Act Section 5, 15 U.S.C. §1055; 37 C.F.R. §2.38(c); TMEP §§1201.03 et seq. and 1201.04. 

 

B.  The applicant’s specimen is illegible.  The applicant must submit a legible duplicate copy or a substitute specimen.  Please note that a service mark specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56.  Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services.  There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.  The applicant must comply with the following if it submits a substitute specimen:

 

1.  Submit an acceptable specimen.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging.  Examples of acceptable specimens for services are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. 

 

2.      Submit the following statement:

 

The specimen was in use in commerce at least as early as the filing date

of the application.

 

3.  Verify the statement above with a signed and dated affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.  An example of an acceptable declaration, with statement, is provided below:

 

The specimen was 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 the facts set forth in this application are true; all statements

made of his/her own knowledge are true; and all statements made on

information and belief are believed to be true.    

                                    _____________________________                                   

                                    (Signature of Authorized Person)

                                    _____________________________

                                    (Print or Type Name and Position)                                                                                                    _____________________________

                                    (Date)

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays. 

 

Questions About This Action

If the applicant has any questions regarding this Office action, please call the examining attorney.

 

/Brian J. Pino/

Examining Attorney

Law Office 114

301.604.0916

703.746.8114 Facsimile

ecom114@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