| To: | McDonald's Corporation (trademark@sughrue.com) |
| Subject: | TRADEMARK APPLICATION NO. 78362296 - BA DA BA BA BA - S8247 |
| Sent: | 9/7/04 3:46:00 PM |
| Sent As: | ECOM105@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/362296
APPLICANT: McDonald's Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: BA DA BA BA BA
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CORRESPONDENT’S REFERENCE/DOCKET NO: S8247
CORRESPONDENT EMAIL ADDRESS: |
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 78/362296
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS:
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.
DELETE STANDARD CHARACTER DRAWING CLAIM:
Applicant has submitted a special form drawing and must delete the standard character claim from the application. 37 C.F.R. §2.52(b). An applicant can make a standard character claim only if the mark on the drawing is presented without any claim to a particular font style, size or color. In the present case, the standard character claim is inappropriate because the applicant’s mark is a sensory mark and does not share the characteristics of a standard character drawing.
SPECIMEN NOT ACCEPTABLE:
The current specimens of record comprise a music sheet and a picture of a video tape, however, the tape was not provided, and is unacceptable as evidence of actual service mark use because they fail to show use of the mark in connection with the specified services. Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) 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. §§2.56 and 2.59(a); TMEP §904.09.
SUBSTITUTING A BASIS:
If the applicant cannot comply with the specimen requirement for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
RESPONSE:
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
My Law Office will move on October 28, 2004. To reach me by phone after that date call (571) 272-9291.
/Marlene Bell/
Marlene Bell
Trademark Examiner
Law Office 105
(703) 308-9105 X 173
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 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.