Office Action for Service Mark Not Clear

[byz_man]

Hi! My wife and I run a wedding photography service where we book clients on behalf of photographers, under an agency agreement, and in turn get a commission. We filed for a service mark 2 months ago and we just received an office action stating,

"Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, rather than depicting the proposed mark in connection with actual photography services, the specimen shows use in connection with services involved in matching photographers and couples getting married. In other words, it does not appear the applicant herself is providing photography services under the proposed mark."

"Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

1. Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
2. Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen."

It was filed in NY under intl class 041 and identified as wedding photography services. The specimen we provided was a screenshot of the website page. Also, added a note in the specimen description saying something like this is proof of my wedding photography service. Any thoughts? We're trying to rectify this ourselves without involving a lawyer, as that will be very expensive for us.

Thanks in advance

 

[quincy]

Hi! My wife and I run a wedding photography service where we book clients on behalf of photographers, under an agency agreement, and in turn get a commission. We filed for a service mark 2 months ago and we just received an office action stating,

"Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, rather than depicting the proposed mark in connection with actual photography services, the specimen shows use in connection with services involved in matching photographers and couples getting married. In other words, it does not appear the applicant herself is providing photography services under the proposed mark."

"Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

1. Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
2. Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen."

It was filed in NY under intl class 041 and identified as wedding photography services. The specimen we provided was a screenshot of the website page. Also, added a note in the specimen description saying something like this is proof of my wedding photography service. Any thoughts? We're trying to rectify this ourselves without involving a lawyer, as that will be very expensive for us.

Thanks in advance

You really should seek assistance from a trademark attorney in your area.

Here is a link to access to the Trademark Examiner's Manual: https://www.uspto.gov/trademark/guides-and-manuals/tmep-archives

Your specimen must show an example of your trademark being used in your offer of services. It must show your trademark through its use in commerce. A webpage could be used as a specimen if the web page indicates how to obtain your services (e.g., contact information, prices, etc).

 

[byz_man]

I don't mind seeking assistance from a trademark lawyer. The thing is some I've seen are very expensive and don't seem trustworthy. It seems this is an issue with the specimen only and not the class.

 

[Zigner]

I don't mind seeking assistance from a trademark lawyer. The thing is some I've seen are very expensive and don't seem trustworthy. It seems this is an issue with the specimen only and not the class.

The same can be said about any profession.

 

[quincy]

I don't mind seeking assistance from a trademark lawyer. The thing is some I've seen are very expensive and don't seem trustworthy. It seems this is an issue with the specimen only and not the class.

Yes. It appears to be an issue with the specimen you submitted.

You can contact your trademark examiner if you have questions about your application and the action letter you received (which is best) or you can contact the Trademark Assistance Center at 703-308-9400.

It is not unusual for a trademark applicant to receive an action letter, by the way. Having a trademark attorney assist you can help you avoid problems and it can be smart to have a trademark attorney review the action letter and your application prior to submitting the amendments - but that option is up to you.

 

[byz_man]

The same can be said about any profession.

And humans breathe air ... so what's your point. This is not like going to walmart to buy a fishing pole. The typical small business owner does not have 1000+ dollars to dish out to lawyer fees.

 

[byz_man]

Yes. It appears to be an issue with the specimen you submitted.

You can contact your trademark examiner if you have questions about your application and the action letter you received (which is best) or you can contact the Trademark Assistance Center at 703-308-9400.

It is not unusual for a trademark applicant to receive an action letter, by the way. Having a trademark attorney assist you can help you avoid problems and it can be smart to have a trademark attorney review the action letter and your application prior to submitting the amendments - but that option is up to you.

Thanks again Quincy! Contacting the trademark examiner seems like the best course at the moment.

 

[PayrollHRGuy]

And humans breathe air ... so what's your point. This is not like going to walmart to buy a fishing pole. The typical small business owner does not have 1000+ dollars to dish out to lawyer fees.

The typical small business owner also doesn't go to the trouble of registering a trademark. One reason they don't is they know that they will likely have to come up with a lot of cash if they ever need to enforce the trademark protection. There isn't a 911 number to call the trademark police. If someone ever uses it you will be paying the lawyers needed to protect it.

 

[byz_man]

The typical small business owner also doesn't go to the trouble of registering a trademark. One reason they don't is they know that they will likely have to come up with a lot of cash if they ever need to enforce the trademark protection. There isn't a 911 number to call the trademark police. If someone ever uses it you will be paying the lawyers needed to protect it.

So what's your point? Should I forget the trademark registration because there's no "911" to call and, based on your opinion, some small business owners don't want to deal with the hassle? Which is more responsible? At the very least, a trademark or servicemark affords you some level of protection. I bet it will be a lot less cash than if you didn't have a trademark and someone swiped your name or brand. The overall point of my question was to establish a smart way and economical way to register my service mark. You do not need a lawyer to register a service mark or trademark in a simple class. It's only when the classes get complicated or dealing with multiple classes, is it beneficial to hire a lawyer.

 

[PayrollHRGuy]

So what's your point? Should I forget the trademark registration because there's no "911" to call and, based on your opinion, some small business owners don't want to deal with the hassle? Which is more responsible? At the very least, a trademark or servicemark affords you some level of protection. I bet it will be a lot less cash than if you didn't have a trademark and someone swiped your name or brand. The overall point of my question was to establish a smart way and economical way to register my service mark. You do not need a lawyer to register a service mark or trademark in a simple class. It's only when the classes get complicated or dealing with multiple classes, is it beneficial to hire a lawyer.

You were the one that mentioned the "typical small business owner". The typical small business owner small business owner never registers a TM.

I just want you to understand that simply having the TM registered doesn't place an force field around your TM. It will cost a not insignificant amount of money to defend it if you ever have to. If a grand or so is too much to spend now there is no reason to think that much more than that won't be at some point in the future.

 

[quincy]

So what's your point? Should I forget the trademark registration because there's no "911" to call and, based on your opinion, some small business owners don't want to deal with the hassle? Which is more responsible? At the very least, a trademark or servicemark affords you some level of protection. I bet it will be a lot less cash than if you didn't have a trademark and someone swiped your name or brand. The overall point of my question was to establish a smart way and economical way to register my service mark. You do not need a lawyer to register a service mark or trademark in a simple class. It's only when the classes get complicated or dealing with multiple classes, is it beneficial to hire a lawyer.

Federal registration of your mark is wise and is advised.

Federal registration puts the country on notice that the mark is in use and makes it easier for the holder of the mark to enforce their rights, should someone infringe.

Damages available to a trademark holder should the mark be infringed include profits of the infringer, demonstrable losses to the trademark holder, and potentially punitive damages, attorney fees, fines and court costs.

I think contacting the trademark examiner is your best first step.

Good luck.

 

[byz_man]

Federal registration of your mark is wise and is advised.

Federal registration puts the country on notice that the mark is in use and makes it easier for the holder of the mark to enforce their rights, should someone infringe.

Damages available to a trademark holder should the mark be infringed include profits of the infringer, demonstrable losses to the trademark holder, and potentially punitive damages, attorney fees, fines and court costs.

I think contacting the trademark examiner is your best first step.

Good luck.

Thanks Quincy! Your comments are very helpful and intelligently laid out. Glad there are people like you on this forum.

 

[quincy]

Thanks Quincy! Your comments are very helpful and intelligently laid out. Glad there are people like you on this forum.

I appreciate the nice words, byz_man. Thanks.

Good luck with your trademark application and with your wedding photography service.