UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/442207

 

This letter responds to the applicant’s communication filed on July 25, 2005.  With its response, the applicant has provided an acceptable amended drawing that is acceptable and has been made of record.  The applicant has also added a third class to the application and has provided a substitute specimen that evidences the services properly classified in Class 41. 

 

The applicant will note the following issue(s) now made final.

 

Mark on Specimen Differs from Mark in Drawing

The drawing displays the mark as WSI with a globe design as the dot over the letter “I”.  However, this differs from the display of the mark on the specimen, where it appears with a swoosh design sweeping from the letter “I” behind the other letters.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

 

In its response, the applicant traverses the requirement for a substitute specimen showing the mark as displayed in the drawing and argues that the “arc” or “swoosh” is separable and immaterial.  Unfortunately, the examining attorney cannot agree.  The arc is prominent and serves to create the impression that the globe is revolving or otherwise in motion.  The arc sweeps from behind the letters “SI” in the three-letter combination “WSI” and reaches around the final letter “I” to touch the globe above the letter “I.”  In this manner the arc connects the letters to the globe and is fully integrated in the mark as a whole. 

 

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.  The statement supporting use of the 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. §2.20; TMEP §904.09.  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)

 

Substitution of Application Basis

If the applicant cannot comply with the requirement for a specimen showing the mark as displayed on the drawing for the use 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 an intent-to-use basis.

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The 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.

 

This statement must be verified, i.e., supported either by an affidavit or by a 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)(i); TMEP §806.01(b).  Please see above for a properly worded declaration.

 

Identification / Classification of Services

The applicant originally identified the services as follows (objectionable language shown in bold):

 

Class 035:           Franchising services, namely, offering technical assistance in the establishment and/or operation of establishments that provide website development and design and web hosting services and technical consulting services to businesses in the field of Internet and website use.

 

Class 042:           Website development and design and web hosting services; training and consulting services to businesses in the field of Internet and website use

 

In its response, the applicant has added a third class to the application and seeks to amend the identification to read as follows:

 

Class 035:           Franchising services, namely, offering technical assistance in the establishment and/or operation of businesses that provide website development, Internet marketing services, and design and web hosting services

 

Class 041:            Training in the field of Internet and websites used for businesses

 

Class 042:           Technical consulting services in the field of internet and websites used for businesses; website development and design; internet marketing services; and web hosting services, namely hosting the websites of others on a computer server for a global computer network

 

The proposed amendment to the identification of services in Class 42 highlighted above cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  The applicant may adopt the following amended identification for Class 42, if accurate:

 

·        Technical consulting services for businesses in the field of internet and website use; website development and design; and web hosting services namely hosting the websites of others on a computer server for a global computer network; (INT. CLASS 42)

 

For 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.

 

Response to Final Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Tracy L. Fletcher/

Trademark Examining Attorney

Law Office 115

U.S. Patent & Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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