| To: | The City of Greensboro (wbeavers@bellsouth.net) |
| Subject: | TRADEMARK APPLICATION NO. 78801007 - CITY OF GREENSBORO, NORTH CAROLINA 1808 - 00722-09 |
| Sent: | 7/20/2006 12:22:16 PM |
| Sent As: | ECOM104@USPTO.GOV |
| Attachments: |
Attachment - 1
Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 78/801007 APPLICANT: The City of Greensboro | |
| CORRESPONDENT ADDRESS: | RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 |
| MARK: CITY OF GREENSBORO, NORTH CAROLINA 1808 | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 00722-09 CORRESPONDENT EMAIL ADDRESS: | Please provide in all correspondence: 1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address. |
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.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 78/801007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The recitation of services is unacceptable as indefinite because the services listed were too broad and may be classified in several different classes.
The municipal services must be indicated specifically and classified appropriately.
Applicant may adopt the following identification of services, if accurate: TMEP §1402.01.
Class 35: “Municipal services, namely, business marketing and promoting economic development and growth of the city of Greensboro, North Carolina”;
Class 37: “Municipal services, namely, road construction, road paving sealing and stripping services in the city of Greensboro, North Carolina.”
Class 41: “Municipal services, namely, the offering to individual’s and businesses located within the corporate city limits of the city, recreational park services”;
Class 45: “Municipal services, namely, providing fire and police services in the city of Greensboro, North Carolina.”
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) 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) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “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;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: 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, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
The specimen does not show use of the mark for the services identified in the application. The specimen submitted shows only a depiction of the drawing of the mark, but does not show the mark used in connection with the services. A specimen showing use of the mark in the sale or advertising of the identified services is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). TMEP §904.
Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in the sale or advertising of its services) showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
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.
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. §2.33(a).
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 the specimen was in use in commerce at least as early as the filing date of the application, the facts set forth in this application are true; 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)
If applicant cannot comply with the requirement for a specimen for the 1(a) basis asserted, then applicant may wish to amend the application to assert a 1(b) basis (intent-to-use) for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
Applicant must substitute the following language for the italicized language in the declaration set forth above in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:
“… that 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;
Applicant has submitted a special form drawing and must delete the standard character claim from the application. An applicant can make a standard character claim only if the mark on the drawing is presented without any claim to a particular font, style, size or color. 37 C.F.R. §2.52(b); TMEP §807.03(c).
In the present case, the standard character claim is inappropriate because of the design portion of the mark.
In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font, style, size, or color. A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style. A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering. 37 C.F.R. §2.52; TMEP §§807.03 et seq. 807.04 et seq.
To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission. The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch. The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c). All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.
Disclaimer
Applicant must disclaim the descriptive wording “CITY OF GREENSBORO” and “1808” and “NORTH CAROLINA” apart from the mark as shown because it merely describes the geographic location of the applicant and the date the geographic location was founded. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). Please see applicant identification of goods as well as applicant’s identification of services as evidence of the above terms descriptiveness.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “CITY OF GREENSBORO” and “1808” and “NORTH CAROLINA” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/David Collier/
Examining Attorney
Law Office 104
Phone (571) 272-8859
Fax No (571) 273-8859
HOW TO RESPOND TO THIS OFFICE ACTION:
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.uspto.gov/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
Note:
In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 4 smaller e-mail messages. The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:
Email 1 includes the following 2 attachments
1. wiki-01
2. wiki-02
Email 2 includes the following 3 attachments
1. wiki-03
2. wiki-04
3. wiki-05
Email 3 includes the following 3 attachments
1. wiki-06
2. wiki-07
3. wiki-08
Email 4 includes the following 3 attachments
1. wiki-09
2. wiki-10
3. wiki-11
Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.