UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY 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.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. 

 

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.

 

ADVISORY – AMENDMENTS TO GOODS/SERVICES:  If the identification of goods and/or services has been amended below, any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number 78/953256

 

 

 

 

EXAMINER'S AMENDMENT

 

AMENDMENT(S) AUTHORIZED:  As authorized by Jennifer Elgin on January 11, 2007, the application is amended as noted below.  If applicant disagrees with or objects to any of the amendments below, please notify the undersigned trademark examining attorney immediately.  Otherwise, no response is necessary.  TMEP §707.   

 

Claim of Ownership of Prior Registrations

 

The following claim of ownership is added to the record:

 

            Applicant is the owner of U.S. Registration Nos. 1141702, 2736360, 2721243, 2845059 and 2920286.

 

37 C.F.R. §2.36; TMEP §812.

 

 

PRIORITY ACTION

 

Applicant must respond to each refusal and/or requirement raised below.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling.  TMEP §§708.01 and 708.05.

 

 

Proof of Common Ownership

 

As discussed with Ms. Elgin, applicant will be submitting evidence of common ownership of this mark and the mark in U.S. Registration No. 2555729, currently owned by Pacesetter, Inc., DBA St. Jude Medical Cardiac Rhythm Management Division, a Delaware corporation.  Applicant will also submit a statement that the marks are owned by wholly owned related companies.  TMEP §1201.01(c).

 

 

Substitute Specimen Required

 

The specimen of record does not show proper service mark use because the advertising on the website appears to be for computer software instead of medical services.  Applicant will submit (1) a substitute specimen that supports use of the mark in commerce with the identified services, and (2) the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

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 applicant cannot satisfy the above requirements, applicant may amend the filing basis from Section 1(a) (use in commerce) to Section 1(b) (intent to use basis) and submit a specimen at a later time with an allegation of use.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark.  15 U.S.C. §§1051, 1053, and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

 

If applicant has questions about its application or needs assistance, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Toby E. Bulloff/

Toby E. Bulloff

Trademark Examining Attorney

Law Office 117

p: (571) 270-1531

f: (571) 270-2531

 

 

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