Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/473835

 

This letter responds to the applicant’s communication filed on December 5, 2005.

 

The examining attorney has reviewed the above referenced response and determined the following:

 

The applicant’s amendment to the Supplemental Register is accepted.

 

PROPOSED MARK DOES NOT FUNCTION

 

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a service mark to indicate the source of the services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.

 

Applicant must submit a specimen showing use of the mark for the goods and/or services specified in the amendment to allege use, because the specimen currently of record does not show use of the mark for any goods and/or services identified in the amendment to allege use.  37 C.F.R. §§2.56 and 2.76(b)(2); TMEP §1104.09(e).  Applicant must also submit a statement that “the substitute specimen was in use in commerce prior to the filing of the amendment to allege use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(1); TMEP §§904.09 and 1104.09(e).

 

The current specimen of record comprises an advertising brochure which shows the proposed mark appearing in two places in the text.  It does not show use for applicant’s services because the mark is use of the mark in relation to some sort of computer system or software as opposed to the services of “providing classes, workshops and seminars in the field of food safety.”

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with an affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Applicant’s Response

 

No set form is required for response to this Office action. The applicant must respond to each point raised. If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Khanh M. Le/

U.S. Patent & Trademark Office

Law Office 113

(571) 272-9435

 

 

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.