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  78/689373

 

This letter responds to the applicant’s Response to Office Action, filed February 21, 2006.

 

Satisfied Requirements

The following requirement has been satisfied and is now WITHDRAWN: 

(1)   Requirement that the applicant claim ownership of U.S. Registrations Nos. 2,412,178 and 2,412,179.

TMEP §714.04.

 

However, for the reasons set forth below, the following requirement is now made FINAL:

(1)   Requirement that the applicant provide an acceptable specimen of use.

 37 C.F.R. §2.64(a).

 

Specimen of Use Requirement – Made FINAL

In the original application, the examining attorney found that the submitted specimen of use, which was comprised of an image of a screen shot featuring the applied-for mark, failed to meet the requirements for a specimen to show use of the applied-for mark in connection with the applicant’s goods.  37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §§904.01 et seq. and 904.09.  The examining attorney therefore required the applicant to submit a substitute specimen.

 

In its Response to Office Action, the applicant claimed that the originally submitted specimen satisfied the requirements set out in TMEP §904.04(d), and should therefore be accepted in connection with the applicant’s identified goods.  The examining attorney has carefully considered the applicant’s arguments, but must respectfully disagree with the applicant’s conclusion. 

 

As correctly noted by the applicant, TMEP §904.04(d) states that, in connection with certain goods, namely, computer programs, video tapes, and movies, an image of a screen-shot showing the applied-for mark used in connection with the computer program, video tape, or movie will be considered an acceptable specimen of use.  However, the image must clearly show that the applied-for mark is being displayed as an indicator of source for the identified goods.  The screen-shot submitted by the applicant does not appear to show use of the applied-for mark with the International Class 009 computer software goods identified by the applicant.  Instead, the provided screen-shot appears to be an image of a web-page allowing use of non-downloadable software.  Specifically, the screen-shot contains hyperlinks for a home page, history, and favorites, along with a hyperlink allowing users to “logout.”  This evidence tends to indicate that the submitted screen shot is of an online webpage featuring non-downloadable software, properly classified in International Class 042, rather than the downloadable or physically possessed software in International Class 009 identified by the applicant.

 

Because the applicant has failed to provide an acceptable specimen use for the goods in International Class 009, the specimen of use requirement is hereby made FINAL.

 

The applicant may satisfy this requirement by either:

 

(1)   submitting a substitute specimen that shows use of the applied-for mark in connection with the goods listed in the application, accompanied by 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) and 2.72(a); TMEP §904.09; or

 

(2)   amending the application basis to intent-to-use under Section 1(b), and satisfying all the requirements for this new basis (see below).  TMEP §806.03(c).

 

If the applicant chooses to submit a substitute specimen, and an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then the 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).

 

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)

 

 

Requirements for an Application Based on §1(b): Intent-to-Use

If the applicant chooses to amend the filing basis to a §1(b), intent-to-use the mark in commerce filing basis, the 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 an 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).

 

 

Proper 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).

 

 

 

/S. Michael Gaafar/

Trademark Examining Attorney

Law Office 116

(571) 272-8259

michael.gaafar@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.