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:
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
"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:
- 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.
- 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