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  78/435622

 

The assigned trademark examining attorney has reviewed the referenced application and has 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.

 

RECITATION OF SERVICES:

 

The applicant’s class 009 description of goods is accepted and made of record. 

 

The wording in the recitation of services is unacceptable as indefinite. Moreover, as written, the recitation of services appears to be overbroad and potentially lists services that are classified in more than one international class.  

When a description is indefinite, the applicant must amend the recitation to specify the common commercial name of the services.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.  TMEP §1402.11. As a suggestion therefore, the applicant may adopt the following description, if accurate:

Promoting http://atlas/netacgi/ - h0http://atlas/netacgi/ - h2public awareness of the need for [indicate area of interest, e.g., improving the nutrition and well-being of children and combating childhood obesity], in International Class 035           

Educational services namely conducting programs in the field of [indicate subject matter, e.g., childhood obesity and child nutrition], in International Class 041

 

            Providing information about http://atlas/netacgi/ - h2http://atlas/netacgi/ - h4nutrition, in International Class 044

 

TMEP §1402.

 

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.

For further assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

ADDITIONAL FEES MAYE BE REQUIRED:

 

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 services that are classified in at least 3 international classes, however applicant paid the fee for only 2 classes.

 

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.

 

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;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

While the nature of the advertising specimen is acceptable for the services suggested by the examining attorney in classes 035, 041 and 044, please also note the following.

 

DRAWING AND SPECIMENS DO NOT MATCH:

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required.  In the present case, the drawing displays the mark as MENU FOR CHANGE, and the specimens show the mark as either MENU FOR CHANGE: GETTING HEALTH FOODS INTO SCHOOLS or MENU FOR CHANGE combined or in close proximity with various fruit designs. 37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears on the drawing, with 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) and 2.72(a); TMEP §904.09; or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  37 C.F.R. §2.51; TMEP §807.14.

 

Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:

 

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 as of the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

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 and the like may jeopardize the validity of the application or document 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)

 

 

Finally, applicant is further advised that, upon the trademark examining attorney’s consideration of the applicant’s substitute specimen or statement of use, registration may be refused under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the proposed mark is merely ornamental and, thus, does not function as a trademark for “vending machines.”

 

In determining whether the public would perceive the proposed mark as a trademark, i.e., an indicator of the source of the goods, or merely as a decorative or ornamental feature, the trademark examining attorney will consider the commercial impression created by the display of the subject matter on the specimen, any prior registrations of the same or similar matter for similar goods, promotion of the subject mark as a trademark, and the practice of the relevant trade.  See TMEP §§1202.03 et seq.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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.

 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

 

 

BBrown

/Brian D. Brown/

Trademark Attorney

Law Office 105

(571) 272-9293

(571) 273-9293 fax

 

 

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

 

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