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  78/674857

 

 

The assigned examining attorney has reviewed the application and determined the following.

 

•           Search of Office records.

The examining attorney has searched the Office records and has found no similar registered or pending mark that would bar registration under Trademark Act §2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

However, the applicant must respond to the following.

 

1.         Failure-to-function refusal.

The material submitted as a specimen of use is unacceptable because it fails to show use of the mark functioning as such for the applicant’s services.  In fact, the applicant provided merely “The typed word BEBO” without reference to any services.

The applicant must submit a specimen showing the mark, as used in commerce, for the services.  37 C.F.R. §2.56.  Examples of acceptable specimens for services are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq. 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act §§1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127, because the record does not show use of the proposed mark as a service-mark.  TMEP §§904.11 and 1301.02 et seq.  The examining attorney will reconsider this refusal if the applicant submits a specimen showing use of the mark in the sale or advertising of the services.

The applicant must also verify, with a declaration* under 37 C.F.R. §2.20 or affidavit, that the substitute specimen(s) was/were in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with a declaration^* under 37 C.F.R. §2.20 or affidavit.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1104.09(d).

If the applicant cannot comply with the requirement for the §1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.  In the instant case, the applicant may wish to amend the application to assert a §1(b) basis.

  

2.         Identification of goods/services.

Because this Office employs parenthesis and brackets for internal purposes, the applicant must recast its identification of goods/services without such typographical characters.  TMEP §1402.12. 

The applicant may adopt the following identification (to the extent accurate):

providing information at the specific request of end-users by means of telephone or global computer networks, namely customized searching

This Office’s Acceptable Identification of Goods & Services Manual is accessible at http://tess2.gov.uspto.report/netahtml/tidm.html.  The applicant should also 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 goods/services that are not within the scope of the goods/services set forth in the present identification.

 

3.        Request for information.

In order to allow for proper examination of this application, including the final determination as to whether the mark is merely descriptive (or deceptively misdescriptive) in relation to the applicant’s goods or services, the applicant must submit samples of advertisements or promotional materials for the goods or services or, if unavailable, for goods or services of the same type.  If such materials are not available, the applicant must describe the nature, purpose, and channels of trade of the goods or services identified in the application.

In addition, the applicant must answer the following question(s) for the record:

Does the wording “bebo” (or the acronym BEBO) have any significance in the applicant’s industry or as applied to the applicant’s services?

See 37 C.F.R. §2.61(b).  See also In re DTI Partnership, L.L.P., 2003 TTAB-LEXIS 171 (2003) (“Applicant’s failure to comply with the Trademark Rule 2.61(b) requirement is a sufficient basis, in itself, for affirming the refusal to register applicant’s mark”).

 

•           Responding to this Office Action.

To respond formally to this Office Action, the applicant’s attorney is strongly urged to utilize this Office’s Trademark Electronic Application System (TEAS) at http://eteas.gov.uspto.report/V2.0/oa300/.

(If the applicant’s attorney responds by using regular mail, he/she is advised that such correspondence must bear the serial number, law office (113), and examining attorney’s name on the upper right corner of each page.  He/she is further advised that  the Trademark Operation has relocated such that 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, and the undersigned’s phone & fax number, respectively, are 571/272-9212 & 571/273-9212.)

To check the status of an application at any time, the applicant’s attorney is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant’s attorney may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.

To respond informally to this Office Action, or for inquiries or questions about this Office Action, the applicant’s attorney should contact the assigned Examining Attorney via this e-mail address:  

brendan.regan@uspto.gov

/J. Brendan Regan/

Examining Attorney

 

Note to TEAS Plus filers: The filing fee for adding classes to a TEAS Plus application is, like the initial filing fee, only $275 per class––provided that all of the following requirements are satisfied:  (1) the fee is submitted using the Trademark Electronic Application System (TEAS) or by Examiner’s Amendment; (2) the applicant filed a complete TEAS Plus application; (3) the applicant has filed and continues to file certain communications via TEAS (e.g., responses to Office Actions); and (4) the applicant maintains its authorization to receive Office communication via e-mail.  37 C.F.R. §§2.6(a)(iii), 2.22(a) and 2.23.