OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Summary of Issues that Applicant Must Address

Specimen Unacceptable
Identification of Goods and Services
Claim of Ownership of Prior Registrations

Search Results

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

Specimen Unacceptable

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the application. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Applicant’s identification of goods must be clarified (see requirement below) so the specimen must be examined for the first identified acceptable goods in the identification which are metal pre-fabricated buildings. The specimen is not acceptable because the mark does not appear on these goods in the specimen. The specimen shows manufacture and assembly services in Class 040, but not the metal buildings. Therefore, the specimen is not acceptable based on the identification of goods as filed in the original application.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; 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. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

The following is a sample declaration for a verified substitute specimen for use in a paper response:

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 therefrom, 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)

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS), applicant should do the following: (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”; and (4) sign personally or enter personally his/her electronic signature, name in printed or typed form, and date after the declaration at the end of the TEAS response form. See 37 C.F.R. §§2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). Please note that these steps appear on different pages of the TEAS response form.

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

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 trademark and/or service mark for the identified goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Identification of Goods and Services

The identification of goods and services must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. First, metal buildings are properly classified in Class 006 while non-metal buildings are classified in Class 019. Next, the wording “manufacture and assembly of pre-fabricated buildings” must be clarified to indicate the services are provided to others and must be classified in Class 040. Applicant may adopt any of the following, if accurate:

Class 006: Pre-fabricated buildings made of metal

Class 019: Pre-fabricated buildings made of non-metal

Class 040: Manufacture and assemble of pre-fabricated buildings for others

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to International Classes 006 and/or 040. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class.

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov/trademarks/tm_fee_info.jsp).

(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:

(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen( of record is acceptable for International Class 040 only. Applicant must submit additional specimens if different international classes are added to the application.

Prior Registration

If applicant owns U.S. Registration No. 3536606, then applicant must submit for the application record a claim of ownership of this registration. See 37 C.F.R. §2.36; TMEP §812. See the attached copy of the registration. See TMEP §812.

Applicant may use the following format to claim ownership of the registration:

Applicant is the owner of U.S. Registration No. 3536606.

Response Guidelines

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

The USPTO applies the following legal authorities when processing a trademark and service mark application:

The Trademark Act of 1946
The Trademark Rules of Practice
Precedential court and Trademark Trial and Appeal Board decisions
USPTO’s Trademark Manual of Examining Procedure (TMEP) (8th ed. Oct. 2011)
USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP) (3d ed. May 2011)

15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 10, 11; see TMEP intro., §§101, 107, 110.

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.uspto.gov/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen. The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen. Trademark Trial and Appeal Board decisions and the TBMP can be found at their website located at http://www.uspto.gov/trademarks/process/appeal/index.jsp.

The acronym “TMEP” used in official USPTO letters and notices refers to the USPTO’s Trademark Manual of Examining Procedure (8th ed. Oct. 2011), a manual written by USPTO staff that explains the laws and procedures governing the trademark application, registration, and post registration processes. The TMEP can be viewed online at the Trademarks’ Home Page at http://www.uspto.gov/trademarks/index.jsp by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

Please note that informal email communication with the Office is not confidential and will be made part of the public record. TMEP §709.04.

/Dannean Hetzel/

Trademark Examining Attorney

Law Office 106

Phone: 571-272-8858

Fax: 571-273-9106

dannean.hetzel@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.