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  78/274499

Mark: FYI

 

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

 

No Conflicting Marks Noted

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.

 

Other Issues

Although the examining attorney has not refused registration, the applicant must respond to the following issues:

 

Classification and Identification of Services

The applicant must clarify the identification of services because the wording is too vague and the exact nature of some of the services is unclear.  TMEP § 1402.01. 

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

The applicant may adopt the following identification, if accurate:

 

Class 35:             [Please note that advertising one’s own goods and services is not deemed to be an advertising service under the Trademark Act.  Rather, it is merely an ancillary activity to the main goods/services.]

 

Advertising services, namely [must specify the exact nature of the advertising services, e.g., direct mail advertising, promoting the services of <indicate             specific industry, e.g. automobile dealerships, banks> through the             distribution of printed and audio promotional materials and by rendering sales promotion advice, providing television advertising for others, advertising agency services, etc.]    

 

Class 35:             Promoting the goods and services of others [must specify how, e.g., by preparing and placing advertisements in an electronic magazine accessed through a global computer network, by providing hypertext links to the web sites of others, by providing a website at which users can link to <indicate subject matter of links>, etc.]

 

[Please note that the service of “providing information” is classified based on the subject matter of the information, thus the applicant has identified services in classes other than Class 35]

 

Class 35:             Providing on-line information in the field of commerce, namely, [the term “commerce” is too broad – applicant must further specify]; commercial information and directory agency; on-line business directories featuring [indicate subject matter, e.g., restaurants and bars][on-line listing, not on-line publication]; providing on-line directory information services also featuring hyperlinks to other web sites; providing consumer information in the field of [indicate goods,             services or subject matter of information]

 

Class 41:             Providing on-line information in the field of entertainment and [specify type of “gaming,” e.g., computer] computer gaming.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Classification/Insufficient Fee

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class(es).

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Requirements for Combined Application – Use Application

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

 

(c)    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 Does Not Show Use of Mark With Specified Services

Applicant must submit a substitute specimen showing use of the mark for the services specified in the application; because the specimen currently of record does not show use of the mark for any services identified in the application.  37 C.F.R. §2.56; TMEP §904.  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The current specimen of record comprises a screen shot of website which shows the proposed mark appearing at the top.  It does not show use for applicant’s services because no reference is made to any of the identified services.  Further, the examiner cannot discern the exact nature of the specimen.

 

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.  TMEP §§1301.04 et seq.

 

The statement supporting use of a 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. Section 2.20; TMEP §904.09.  The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).

 

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)

                        _____________________________

                        (Print or Type Name and Position)

                        _____________________________

                                    (Date)

 

If the declaration is filed electronically through TEAS, or by e-mail, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

Further Information Required

The nature of the services on which the applicant uses the mark is not clear from the present record.  In order to allow proper identification and classification of the services on which the applicant uses the mark, and to determine other issues of registerability, the applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must describe their nature, purpose and channels of trade.  37 C.F.R. Section 2.61(b); TMEP §§ 814 and 1402.01(d).

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

 

Wendy B. Goodman

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(703) 308-9103, x409

(703) 746-8103 (fax)

ecom103@uspto.gov

 

How to Respond Electronically:

To respond to this Office action electronically, the applicant must:

 

• include the serial number in the subject line;
• send the response to ecom103@uspto.gov.  E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
• submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
• respond within six-months from the Office action mailing date, or within the period stated in the Office action;
• respond in English; and
• sign the response electronically, e.g. /john smith/.  See 37 CFR §2.193(c)(1)(iii); TMEP §804.05.

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

Note: only one e-mail address may be used for correspondence.  TMEP §§304.03 and 304.07. 

 

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.