UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/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 78/409097

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Jon Del Barrio on November 22, 2004, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

RECITATION OF SERVICES

 

International Class 041

 

Entertainment services, namely, providing sports information on-screen during televised sporting events

 

DESCRIPTION OF THE MARK

 

The design portion of the mark is a representation of a sports ball with a face, within a circle.

 

 

PRIORITY ACTION

 

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

SPECIMEN

 

The current specimen of record is unacceptable because it does not show use of the mark with the specified services.  The 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.

 

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.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §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)

 

 

 

 

SUBSTITUTING A BASIS

 

If applicant cannot comply with the requirement for an acceptable specimen for the Section 1 (a) basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert a Section 1(b) basis.

Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis under Section 1(b) of the Trademark Act:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

Trademark Act Section 44, 15 U.S.C. §1126.  This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  Trademark Act Section 44, 15 U.S.C. §1126; 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §1008.

 

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

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/ Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 105

(571) 272-9292

 

 

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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