PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
78805264 |
LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
MARK SECTION (no change) |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Downloadable and printable electronic publications and reports, namely, books, newsletters, and reports featuring information in the field of oil, petroleum, natural gas
and energy, including databases of information in the field of oil, petroleum, natural gas and energy accessible via a global computer information web-based network |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 07/02/1997 |
FIRST USE IN COMMERCE DATE |
At least as early as 07/02/1997 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Downloadable and printable electronic publications and reports, namely, books, newsletters, and reports featuring information in the field of oil, petroleum, natural gas
and energy; electronic databases in the field of oil, petroleum, natural gas and energy recorded on computer media |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 07/02/1997 |
FIRST USE IN COMMERCE DATE |
At least as early as 07/02/1997 |
GOODS AND/OR SERVICES SECTION (016)(current) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
publications, namely, books, newsletters and reports relating to information in the field of oil, petroleum, natural gas and energy |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 07/02/1997 |
FIRST USE IN COMMERCE DATE |
At least as early as 07/02/1997 |
GOODS AND/OR SERVICES SECTION (016)(proposed) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Printed publications, namely, books, newsletters and reports relating to information in the field of oil, petroleum, natural gas and energy |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 07/02/1997 |
FIRST USE IN COMMERCE DATE |
At least as early as 07/02/1997 |
STATEMENT TYPE |
"The substitute specimen(s) was in use in commerce as of the filing date of the application." |
SPECIMEN
FILE NAME(S) |
\\TICRS\EXPORT\IMAGEOUT\7 88\052\78805264\xml1\ROA0 002.JPG |
SPECIMEN DESCRIPTION |
Online catalog and ordering form for printed publications. |
GOODS AND/OR SERVICES SECTION (042)(no change) |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
Applicant notes the Class 42 recitation set forth in the original application is included in its entirety in the Class 42 recitation of Applicant's former registration for a
different version of the mark (Registration No. 2,282,793). As a result, the original Class 42 recitation in Serial No. 78/805,264, should be acceptable and no additional classes need to be added. In
accordance with the Examiners request, Applicant amends its application to withdraw the specimens originally submitted and to submit substitute specimen for the goods in Class 16. Applicant notes
that the substitute specimen is an online catalog and order form which is directly associated with the goods identified by Applicants mark and included on Applicants website. According to the
Trademark Manual of Examining Procedure, a catalog is an acceptable specimen provided that it includes (1) a picture of the relevant goods, (2) the mark sufficiently near the picture of the goods to
associate the mark with the goods, and (3) information necessary to order the goods. TMEP § 905.06. Applying this test to Applicants catalog, it is clear that the catalog satisfies the first
criterion. Applicants mark has been adopted and used for printed publication, namely, books, newsletters and reports relating to information in the field of oil, petroleum, natural gas and energy.
The specimen includes a list of some of the publications offered by Applicant and pictures of two such publications. With regard to the second part of the test, Applicants mark is prominently
displayed near both the list of publications and pictures of the two publications. The depiction of Applicants mark in this manner provides consumers with an automatic association of this mark with
the Applicants printed publications. The final element of the test mandates that the specimen include information necessary to order the goods. When determining whether or not a catalog satisfies
this factor, it is necessary to view the ruling in Lands End, Inc. v. Manback, 797 F.Supp. 511, 24 U.S.P.Q.2d 1314 (E.D.Va. 1992). In Lands End, the applicant sought to overturn a ruling by the
Trademark Trial and Appeal Board (TTAB) that its catalog was unacceptable as a specimen. The Lands End catalog included a picture and description of each item, as well as an order form and telephone
number to allow customer to purchase an item straight from the identification in the catalog. With regard to the third factor, the court held that the Lands End catalog was acceptable as a specimen
because a customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone. Lands End, 797 F.Supp. at 514
(emphasis added). Similar to the catalog in the Lands End case, Applicants catalog has a picture and list of some of the publications identified by Applicants mark and an order form for purchasing
the same products, including the cost. Similar to the Lands End case, Applicant respectfully submits that its catalog and website satisfy the third part of the test and are acceptable specimens for
this mark. Applicant also submits a declaration signed by its attorney, who has actual verbal power of attorney from Applicant, to verify that the substitute specimens were used in commerce at least
as early as the filing date of the application. In light of the foregoing amendments, Applicant has responded to all outstanding issues raised in the Office Action, and, accordingly, submits that its
mark should be passed to publication and registered on the Principal Register of the United States Patent and Trademark Office. |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Robert H. G. Lockwood/ |
SIGNATORY'S NAME |
Robert H. G. Lockwood |
SIGNATORY'S POSITION |
Attorney |
DATE SIGNED |
12/18/2006 |
RESPONSE SIGNATURE |
/Robert H. G. Lockwood/ |
SIGNATORY'S NAME |
Robert H. G. Lockwood |
SIGNATORY'S POSITION |
Attorney |
DATE SIGNED |
12/18/2006 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Dec 18 15:24:01 EST 2006 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0061218152401244283-78805
264-3605a63e5efe19ae46bea
8c10a0a12981-N/A-N/A-2006
1218143431758370 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
78805264 has been amended as follows:
Classification and Listing of Goods/Services
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Downloadable and printable electronic publications and reports, namely, books, newsletters, and reports featuring information in the field of oil, petroleum, natural gas and
energy, including databases of information in the field of oil, petroleum, natural gas and energy accessible via a global computer information web-based network
Original Filing Basis: 1(a).
Proposed: Class 009 for Downloadable and printable electronic publications and reports, namely, books, newsletters, and reports featuring information in the field of oil, petroleum, natural gas and
energy; electronic databases in the field of oil, petroleum, natural gas and energy recorded on computer media
Filing Basis: 1(a).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 016 for publications, namely, books, newsletters and reports relating to information in the field of oil, petroleum, natural gas and energy
Original Filing Basis: 1(a).
Proposed: Class 016 for Printed publications, namely, books, newsletters and reports relating to information in the field of oil, petroleum, natural gas and energy
Filing Basis: 1(a).
Section 1(a), Use in Commerce: The mark was first used at least as early as 07/02/1997 and first used in commerce at least as early as 07/02/1997, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 016.
The specimen(s) submitted consists of Online catalog and ordering form for printed publications..
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen File1
Additional Statements
Applicant notes the Class 42 recitation set forth in the original application is included in its entirety in the Class 42 recitation of Applicant's former registration for a different version of the
mark (Registration No. 2,282,793). As a result, the original Class 42 recitation in Serial No. 78/805,264, should be acceptable and no additional classes need to be added. In accordance with the
Examiners request, Applicant amends its application to withdraw the specimens originally submitted and to submit substitute specimen for the goods in Class 16. Applicant notes that the substitute
specimen is an online catalog and order form which is directly associated with the goods identified by Applicants mark and included on Applicants website. According to the Trademark Manual of
Examining Procedure, a catalog is an acceptable specimen provided that it includes (1) a picture of the relevant goods, (2) the mark sufficiently near the picture of the goods to associate the mark
with the goods, and (3) information necessary to order the goods. TMEP § 905.06. Applying this test to Applicants catalog, it is clear that the catalog satisfies the first criterion. Applicants
mark has been adopted and used for printed publication, namely, books, newsletters and reports relating to information in the field of oil, petroleum, natural gas and energy. The specimen includes a
list of some of the publications offered by Applicant and pictures of two such publications. With regard to the second part of the test, Applicants mark is prominently displayed near both the list
of publications and pictures of the two publications. The depiction of Applicants mark in this manner provides consumers with an automatic association of this mark with the Applicants printed
publications. The final element of the test mandates that the specimen include information necessary to order the goods. When determining whether or not a catalog satisfies this factor, it is
necessary to view the ruling in Lands End, Inc. v. Manback, 797 F.Supp. 511, 24 U.S.P.Q.2d 1314 (E.D.Va. 1992). In Lands End, the applicant sought to overturn a ruling by the Trademark Trial and
Appeal Board (TTAB) that its catalog was unacceptable as a specimen. The Lands End catalog included a picture and description of each item, as well as an order form and telephone number to allow
customer to purchase an item straight from the identification in the catalog. With regard to the third factor, the court held that the Lands End catalog was acceptable as a specimen because a
customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone. Lands End, 797 F.Supp. at 514 (emphasis added).
Similar to the catalog in the Lands End case, Applicants catalog has a picture and list of some of the publications identified by Applicants mark and an order form for purchasing the same
products, including the cost. Similar to the Lands End case, Applicant respectfully submits that its catalog and website satisfy the third part of the test and are acceptable specimens for this
mark. Applicant also submits a declaration signed by its attorney, who has actual verbal power of attorney from Applicant, to verify that the substitute specimens were used in commerce at least as
early as the filing date of the application. In light of the foregoing amendments, Applicant has responded to all outstanding issues raised in the Office Action, and, accordingly, submits that its
mark should be passed to publication and registered on the Principal Register of the United States Patent and Trademark Office.
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or
licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and
2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the
application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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 he/she is properly
authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being
filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association
has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such
other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made
of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.
Signature: /Robert H. G. Lockwood/ Date: 12/18/2006
Signatory's Name: Robert H. G. Lockwood
Signatory's Position: Attorney
Response Signature
Signature: /Robert H. G. Lockwood/ Date: 12/18/2006
Signatory's Name: Robert H. G. Lockwood
Signatory's Position: Attorney
Serial Number: 78805264
Internet Transmission Date: Mon Dec 18 15:24:01 EST 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006121815240124
4283-78805264-3605a63e5efe19ae46bea8c10a
0a12981-N/A-N/A-20061218143431758370