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. 

 

 

Serial Number  78/576598

 

This letter responds to applicant’s communication filed on October 31, 2005.  Applicant (1) amended the identification in International Class 009, and (2) submitted a disclaimer.  Numbers (1)-(2) are acceptable.

 

However, for the reasons discussed below, applicant’s recitation of services in International Class 041 remains unacceptable and the requirement for an acceptable recitation of services is maintained and made FINAL.  Furthermore, applicant failed to submit the required substitute specimen for the services specified in International Class 041.  Therefore, for the reasons discussed below, the requirement for a substitute specimen is maintained and made FINAL.

 

THESE FINAL REQUIREMENTS APPLY TO INTERNATIONAL CLASS 041 ONLY

 

If applicant should fail to respond to this Office action within the six month time limit, then International Class 041 will be deleted from the application and the application will proceed forward for International Class 009 only.  37 C.F.R. §2.65(a).

 

RECITATION OF SERVICES – FINAL

 

The requirement for an acceptable recitation of services in International Class 041 is maintained and made FINAL.

 

The current wording used to describe the services needs clarification because the applicant has not adequately identified the nature of the group or individual providing the entertainment.  Applicant may adopt the following recitation of services, if accurate.  TMEP §1402.01.

 

International Class 041: Entertainment services, namely, live musical and vocal performances BY A MUSICAL GROUP.

 

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.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

SPECIMEN DOES NOT SHOW USE OF THE MARK WITH SPECIFIED SERVICES IN INTERNATIONAL CLASS 041 - FINAL

 

The requirement for an acceptable substitute specimen is maintained and made FINAL.

 

Applicant must submit a substitute specimen showing use of the mark for the services specified in the application, because the specimen currently of record does not show use of the mark for any services identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq..  Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The current specimen of record comprises the back cover of a compact disc and is an unacceptable specimen for applicant’s services, because it does not show use in commerce of the mark, NPG RECORDS, in the sale or advertising of applicant’s entertainment services.  Specifically, the back cover of the compact disc makes no reference to the identified services, namely, “live musical and vocal performances.”  

 

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.

 

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 a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

If applicant cannot comply with the specimen requirement for the 1(a) use of the mark in commerce 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 1(b) bona fide intention to use the mark in commerce basis.  Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration 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 as of the filing date of the application.

 

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R, §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.

DECLARATION FOR A SUBSTITUTE SPECIMEN

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like 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 registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)

 

PROPER RESPONSE TO FINAL ACTION

 

If applicant does not respond within six months of the mailing date of this final action, then the following class to which the final requirements apply will be deleted from the application: International Class 041.  The application will proceed forward for the remaining class.  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).

 

 

/Mariam Aziz Mahmoudi/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 112

Tel. (571) 272-9733

Fax (571) 273-9733

 

 

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.