Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA63149
`ESTTA Tracking number:
`01/23/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Innovage, Inc.
`Corporation
`19511 Pauling
`Foothill Ranch, CA 92610
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`Howard C. Miskin
`Stoll, Miskin & Badie
`350 Fifth Avenue, Suite 4710
`New York, NY 10118
`UNITED STATES
`howard@smbtlaw.com, wendi@smbtlaw.com Phone:212-268-0900
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78488167
`01/23/2006
`
`Publication date
`Opposition
`Period Ends
`
`12/27/2005
`01/26/2006
`
`Nu-Life Inc.
`Suite 600A 645 King St. W
`Toronto, Ontario, M6V1M5
`CANADA
`Goods/Services Affected by Opposition
`
`Class 008.
`All goods and sevices in the class are opposed, namely: beard trimmers; cutlery; cutlery sets;
`flatware; hair clippers; cutters, namely box cutters; eyelash curlers; driver tools, namely hand-held
`screw drivers; hair removers, namely razors; hand tools, namely non-motorized tools, namely screw
`drivers, pliers, wrenches, files and rasps; knife sets; knives; kitchen knives; pliers; pocket knives;
`pizza slicers; razors; slicers for slicing fruits and vegetables; scissors; scissors sets; socket sets;
`travel kits, namely manicure sets; can openers; manicure sets; nasal clippers, namely clippers to trim
`nose hairs; pedicure sets; non-electric peelers, namely tools to peel the skins from fruits and
`vegetables; hand-operated food processors; hand-operated ratchet sets; hand-operated screwdrivers
`and screwdriver sets; non-electric shavers
`Class 009.
`All goods and sevices in the class are opposed, namely: answering machines; batteries; battery
`chargers; battery converters; binoculars; boom boxes, namely mini, portable stereo sets; calculators;
`camcorders; cameras; CD-Rom cases; CD players; cordless phones; electronic organizers;
`emergency lights; fire extinguishers; fridge magnets; headphones; magnifying glasses; mouse pads;
`pre-recorded CD-ROM's containing music and games; FM radios with scanning tuners; radios; radio
`speakers; telephones; televisions; emergency auto kits comprised of a hand held spotlight and
`battery charger; dog alarms, namely alarms for ensuring canine pets do not leave their containment
`area; electronic game programs; cassette recorders, car cassette players; personal cassette player
`with a radio, personal CD player with a radio; computer game cassettes, computer game software,
`
`

`
`computer game discs; magnifying lenses; pre-recorded CD-ROM's not containing software; pre-
`recorded videos, namely movies and instructional materials; video game software; thermal forks,
`namely barbeque forks with a temperature indicator
`Class 016.
`All goods and sevices in the class are opposed, namely: art boards, namely boards used for drawing,
`painting or creating art; art sets, namely sets containing two or more of crayons, paint, coloured pen
`sets, pens and paper; atlases; photo albums; bibles; boxed stationery; calendars; crayons; crayon
`and paint sets; diaries; dictionaries; encyclopedias; erasers; flash cards; eraser sets; greeting cards;
`markers; juice books, namely cookbooks containing recipes relating to juices; memo pads; lunch
`bags; pens; pen sets; pencil cases; pencil sharpeners; note cards; office diaries; paper boxes,
`namely gift boxes; personal organizers; phone indexes; puzzle books; recipe books; stacking boxes,
`namely storage boxes for storing paper; stationery boxes; staplers; calligraphy kits comprised of
`calligraphy pens and paper; compasses for drawing or drafting; desk stands and holders for pens,
`pencils, and ink; empty designer gift bags made of fabric or paper; paperclips and letter clips; desktop
`organizers, organizers for personal use, organizers for stationery use; document portfolios,
`stationery-type portfolios; paper mail pouches, paper pouches for packaging; stationery sets
`comprised of stationery paper and pens and envelopes
`Class 021.
`All goods and sevices in the class are opposed, namely: mops; bakeware; bath sets, namely sets
`containing two or more of garbage cans, tissue covers, toothbrush holders and soap dishes; bottle
`openers; bowls; bowl sets, chopper boards, namely kitchen boards for chopping vegetables and the
`like; canteens; car seat coolers namely food coolers used inside a vehicle; car dusters, namely
`dusters to remove dust from vehicles; comb sets; cups; cutting boards; freezer boxes, namely plastic
`containers for food; frying pans; hair brushes; graters, namely cheese graters; garbage baskets;
`household dusters; kitchen graters, namely cheese graters; kitchen scrubbers, namely pot scrubbing
`pads; ovenware; plates; plastic bowls; poultry cooking sets, namely turkey basters and turkey sewing
`needles; rubber brooms; scouring pads; shower caddies; serving spoons; soup ladles; spoon sets;
`tea sets; vacuum bottles; travel mugs; utensils for barbecues, namely, forks, tongs, turners; insect
`traps; portable beverage cooler; non-precious metal candle holders and candle holder sets; non-
`electric cooking pans; household containers for food; hand-operated kitchen tools, namely egg
`beaters, whisks, rolling pins, spatulas, turners; fitted picnic baskets; plastic food, coffee and teas
`canisters; portable blenders, namely hand-operated blenders for mixing beverages and liquid food;
`salad tongs; scrubbing brushes; empty soap bottles; tea strainers, wine strainers, cooking strainers;
`household spatulas, household spatula sets; teapots made of non-precious metal; brushes for
`cleaning vegetables
`Class 028.
`All goods and sevices in the class are opposed, namely: air hockey games; backgammon sets;
`baseballs; bean bags; black jack games; board games; card games; chess sets; dart games; dolls;
`doll houses; catchers, namely fishing lures; handheld unit for playing electronic games; magic sets;
`jigsaw puzzles; paper and model playing kits, namely toys of all types made of paper and paper
`model toys such as trucks and airplanes; pinball games; plush toys; poker games; puppets; toy
`racing cars; stamp sets, namely sets of toy rubber stamps for making impressions; soccer balls;
`rolling hoops, namely toys comprising hoops that can be rolled; three-dimensional puzzles; squirters,
`namely toy water pistols; toys, namely, water guns, wind-up toys, plush toys, dolls, cars and trucks;
`walky talkies, namely toy communication devices; toy building blocks; card games, board games,
`battery-powered computer game with LCD screen which features animation and sounds effects,
`travel card games, travel board games, travel hand-held computer games; inflatable beach balls;
`handheld units for playing video games
`
`Attachments
`
`NoticeOfOpposition-innovage.pdf ( 5 pages )
`Exhibit A.pdf ( 7 pages )
`
`Signature
`Name
`Date
`
`/hcm/
`Howard C. Miskin
`01/23/2006
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of
`
`Application Serial No: 78/488,167
`Published in the Official Gazette on December 27, 2005
`Mark: INNOVAGE
`
`Applicant: Nu—Life Inc.
`
`___________________________________________________________ __X
`
`INNOVAGE, INC.
`
`'
`
`Opposer,
`
`V.
`
`Opposition No.
`
`NU—LIFE INC.
`
`:
`Applicant.
`____________________________________________________________ __X
`
`The Empire State Building
`350 Fifth Avenue
`
`Suite 4710
`
`New York, NY 10118
`
`(212) 268-0900
`
`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`
`P.O.BoX 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Innovage, Inc. (hereinafter “Innovage” or “Opposer”), company organized in California,
`
`having it’s principal place of business at 19511 Pauling, Foothill Ranch, California 92610
`
`believe that it will be damaged by registration of the mark shown in the above—identified
`
`application and hereby oppose the same.
`
`I hereby certify that this correspondence is being filed online
`through ESTTA, on January 23 2006
`
`/s/Wendi Opper
`Wendi Opper
`January 23 2006
`
`Date:
`
`

`
`The grounds for the opposition are as follows:
`
`1.
`
`Opposer has used the trademark INNOVAGE on greeting cards; books, namely
`
`children books, coloring books, history books, arts and craft books, greeting card
`
`books; posters; storage boxes; stickers; games and toys, namely cards, dice,
`
`erasable coloring books, jigsaw puzzles, plush animal toys, toy spyglasses, chess
`
`set, casinos, toy guns, toy water guns, ball dart game, bubble makers, table tennis
`
`tables, rackets and balls, toy cars, toy computers, noise making animal toys,
`
`computer games; crayons; organizers; cardboard storage box; note paper; photo
`
`albums; paper; personal organizers; fabric, leather and imitation leather bags;
`
`plastic and glass ornaments; kitchen utensils; decorative magnets; metal and non-
`
`metal key holders; registry books; plush hats; chalk; art sets, namely boards used
`
`for drawing, painting or creating art, two or more crayons, paint, colored pen sets,
`
`pens and paper; pen sets; kitchen plastic containers; canister vacuums; watches,
`
`including LCD watches; dusters; purses, namely purses with organizers; tv/radio
`
`set; steak knives; desktop organizers; automobile emergency kits, namely first aid
`
`kits and maps; bags, namely duffel bag, travel bags, laundry bags, cooler bags;
`
`wicker baskets, backpacks; beauty baskets, namely combination of bath gels,
`
`soaps, lotions, creams, sponges; bath sets, namely garbage cans, tissue covers,
`
`tooth brush holders and soap dishes; manicure sets; mugs, namely car mugs,
`
`electrical light up mugs; binoculars; handheld battery—operated massagers;
`
`bookcase organizers; bookends; book lights; calculators; digital mini cameras;
`
`calendars; decorative candles; candle holders; canisters; CD book set, CD case;
`
`umbrellas, namely children umbrellas, electrical folding umbrellas; food chopper;
`
`Christmas ornaments; clocks; alarm clocks; coasters; cork screws; cosmetics;
`
`electrical fans; decorative electrical fountains; picture frames; glass cutting board;
`
`

`
`hair clipper, including nasal hair clippers; incenses; jewelry box; key chains;
`
`personal alarms; lamps, namely halogen, table and spot lamps; lanterns; lapel
`
`pins; steam cleaners; lighters; magazine racks; magnetic socket tools; necklaces;
`
`organizers; portfolios; phones, including cordless phones; potpourris, radios,
`
`namely radio—clocks; electrical scissors; sewing boxes; sewing kits containing
`
`thread and needles; shoe shine kits, namely boxes including shoe polish and
`
`cream, shoe shine cloths and brushes; tools, namely screwdrivers, hammers,
`
`sockets, pliers, wrenches, files and rasps; drill sets; toothbrushes; hairbrushes
`
`including Vibrating hairbrushes; batteries; wallets; trays; kitchen graters, namely
`
`cheese graters; torch sets, namely butane—powered lighter for fireplaces,
`
`barbeques and the like in commerce since at least July 1, 2001, and are continuing
`
`to use the marks on these products to the present. Innovage, Inc. has filed a based
`
`on use Trademark application for “lnnovage” on these goods on March 29, 2005,
`
`Serial Number 78/596,872, (hereinafter “Pending Application.”) In an Office
`
`Action the examiner of the Pending Application has classified these goods into
`
`classes 03, 04, 06, 07, 08, 09, 10, ll, l4, l6, 18, 20, 21, 25, 26, 28, and 34. (See
`
`Office Action dated October 25, 2005, attached hereto as Exhibit A)
`
`Applicant, Nu—Life Inc., filed the aboVe—referenced intent—to—use application on
`
`September 23, 2004, for “innovage.” This application, Serial No. 78/488,167, is
`
`for Various goods in classes 8, 9, 16, 21 and 28, and was published for Opposition
`
`in the Official Gazette on December 27, 2005.
`
`On information and belief, the goods recited in classes 8, 9, 16, 21 and 28 of the
`
`opposed application and those goods on which Opposer has been using it’s above-
`
`cited mark are of the same general class, sold through the same channels of
`
`T:\InnoVage\Vs. Nu-life\NoticeOfOpposition—innoVage.doc
`
`

`
`commerce, and to the same class of purchasers. Some of the goods recited in the
`
`Pending Application are identical to Opposer’s products. The Opposer’s above
`
`cited mark was in use in commerce for at least over four (4) years prior to
`
`Applicant’s filing of its intent—to—use application. Based on the foregoing, use of
`
`the opposed mark depicted in the above—referenced application will cause injury
`
`and damage to Opposer.
`
`Applicant’s mark is identical to Opposer’s mark “Innovage” and is used on identical
`
`goods and, on information and belief, the closeness of purchasers and channels of trade
`
`create a likelihood of confusion in the marketplace as to the source of the goods and
`
`damage Opposer.
`
`Consumers and the market place will be likely to confuse the source of the parties’
`
`goods, putting Opposer’s reputation at risk and dependant on Applicant’s actions or
`
`inactions as to quality.
`
`The Applicant and the Opposer were adverse parties in a lawsuit filed in Canada in
`
`2004, which was eventually settled. In this Canadian case, Applicant allegedly filed for
`
`a Canadian trademark for the mark “DS MAX” in bad faith, which was the name of
`
`Innovage, lnc.’s predecessor in interest. It was during those proceedings that Applicant
`
`became aware of Opposer’s then intended adoption of the mark “innovage.”
`
`On information and belief, Applicant has filed the above—referenced application in bad
`
`faith with no intent to use the mark in commerce.
`
`This petition is being submitted in triplicate, along with the fee required pursuant to
`
`Section 2.6(a) (17) of $300.00 per class is enclosed.
`
`WHEREFORE, Opposer prays for judgment that:
`
`A.
`
`The registration of Applicant’s mark, Application Serial No 78/488,167 be
`
`denied.
`
`

`
`Opposer has appointed Howard C. Miskin (Reg. No. 18,999), Gloria Tsui—Yip (Reg. No.
`
`42,188), Philippe Zylberg and Iwona A. Stasiewicz, members of the Bar of the State of New
`
`York, whose address is 350 Fifth Avenue, Suite 4710, New York, NY 10118, as its duly
`
`authorized agents and attorneys in the matter of the above—identified opposition to prosecute said
`
`opposition, to transact all business in the Patent and Trademark Office and in the United States
`
`courts in connection with the opposition, to sign his/her name to all papers which may
`
`hereinafter be filed in connection therewith, and to receive all communications relating to the
`
`same.
`
`Dated: January 23, 2006
`
`Respectfully submitted,
`INNOVAGE, INC.
`
`By: _/s/ Howard C. Miskin
`Howard C. Miskin (Reg. No. 18,999)
`
`Attorney for Opposer
`INNOVAGE, INC.
`
`350 Fifth Avenue, Suite 4710
`
`New York, NY 10118
`
`(212) 268-0900
`
`T:\Innovage\vs. Nu-life\NoticeOfOpposition—innovage.doc
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`SERIAL NO:
`
`78/596872
`
`APPLICANT:
`
`Innovage, Inc.
`
`CORRESPONDENT ADDRESS:
`
`HOWARD C. MISKIN
`
`STOLL, MISKIN & BADIE
`350 5TH AVE STE 4710
`
`NEW YORK, NY 10118-4710
`
`MARK:
`
`INNOVAGE
`
`>I< 7 8 5 9 6 8 7 2 >I<
`
`RETURN ADDRESS:
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`Alexandria, VA 22313—1451
`
`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.
`
`OFFICE 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.
`
`Serial Number 78/596872
`
`The assigned examining attorney has reviewed the referenced application and determined the following.
`
`The examining attorney has searched the Office records and no similar registered or pending mark has been found that
`
`would bar registration under Trademark Act Section 2(d), 15 U.S.C. §l052(d). TMEP §704.02. A further search of the
`
`Office records and a review of the merits of the application are both deferred until applicant responds to the issues raised in
`this Office action. TMEP §704.02.
`
`The applicant must provide a response resolving the following informalities.
`INFORMALITIES
`
`

`
`1.
`
`IDENTIFICATION OF GOODS -UNACCEPTABLE:
`
`The
`
`identification of goods is indefinite because the applicant does not clearly specify the nature of the goods being
`
`provided. The identification of goods must be specific. The applicant must amend the identification to specify the common
`
`commercial name of the goods or to indicate their nature. The identification must be all#inclusive. The applicant should
`
`amend the identification to replace this wording with "namely." Also, the identification of goods is too broad because it
`
`could include goods es classified in other classes. The applicant may amend the identification to substitute the following
`
`wording, if accurate:
`
`“Cosmetics, incense, beauty baskets, namely combination of bath gels, soaps, lotions, creams,
`
`sponges; potpourris” in International Class 003;
`
`“Decorative candles,” in International Class 004;
`
`“Jewelry boxes of metal, metal key chains, metal key holders,” in International Class 006;
`
`“Drill sets for hand-operated power tools consisting of groups of drill bits and cases, electrical scissors, multi-purpose
`
`steam cleaners; electric food choppers; canister vacuum cleaners, ” in International Class 007;
`
`“Hand tools, namely screwdrivers, hammers, socket sfl, pliers, wrenches, files and rasps, steak knives; manicure sets; hair
`
`clippers; magnetic socket tools [must specify type of tools Z,” in International Class 008;
`
`“Radios, namely radio—clocks, phones, cordless phones, calculators, electronic personal organizer, tv/radio set, decorative
`
`magnets, computer game cartridges, discs, and programs; calculators; digital mini cameras; binoculars; personal security
`
`alarms; electrically heated vibrating hair brush, batteries, CD case, CD book set consisting primarily of compact discs
`
`featuring [specify the subiect matterl and a book; automobile emergency kits, namely first aid kits and maps,” in
`International Class 009;
`
`“Handheld battery—operated massagers,” in International Class 010;
`
`“Lamps, lamps, namely halogen, table and spot lamps; lanterns [must specify type, i.e., electrical, oil]; torch sets, namely
`
`butane—powered lighter for fireplaces, barbeques and the like; electrical fans; decorative electrical water fountains; book
`
`lights,” in International Class 01 l;
`
`“Clocks, alarm clocks, necklaces, watches, LCD watches, lapel pins; jewelry boxes of precious metal, ” in International
`Class 014;
`
`“Greeting cards; books, namely children books, coloring books, history books, arts and craft books, greeting card books ;
`
`posters; photo storage boxes; stickers; personal organizer, erasable coloring books, crayons, pen sets, art sets, consisting
`
`pf boards used for drawing, painting or creating art, two or more crayons, paint, colored pen sets, pens and paper; cardboard
`
`storage box; note paper; photo albums; paper [must specify type of paper or purposel; registry books; chalk; calendars;
`
`desktop organizers; coasters made of paper; bookends; padfolios; bookcase organizers,” in International Class 016;
`
`“Wallets, purses, purses with personal organizes; bags, namely duffel bag, travel bags, laundry bags, cooler bags,
`
`backpacks; umbrellas, namely children umbrellas, electrical folding umbrellas; leather and imitation leather bags; leather
`
`key chains,” in International Class 018;
`
`

`
`“Picture frames, Jewelry boxes not of metal, magazine racks, non—metal and non—leather key chains, non—metal key holders;
`
`holiday Qlastic ornaments,” in International Class 020;
`
`“Toothbrushes, wicker baskets, cork screws; tooth brush holders and soap dishes; hair brushes; shoe shine kits, namely
`
`boxes including shoe polish and cream, shoe shine cloths and brushes; shoe shine kits, namely boxes comprising of shoe
`
`polish and cream, shoe shine cloths and brushes; mugs, namely car mugs, electrical light up mugs; coasters not of Qager
`
`and not being table linen,° canister sets; bath sets, namely garbage cans, tissue covers; kitchen utensils [specify the itemsl,
`
`kitchen graters, namely cheese graters; Qortable kitchen plastic containers [or storing goods; dusters; glass ornaments; glass
`
`cutting board; trays,” in International Class 021;
`
`“Table linen, namely coasters, cloth coasters, tabric, namely, [must sgecify tyge and/or Qurgosel,” in International Class
`
`024;
`
`“Plush hats,” in International Class 025;
`
`“Sewing boxes; sewing kits containing thread and needles,” in International Class 026;
`
`“Christmas tree ornaments, games and toys, namely playing cards, dice, jigsaw puzzles, plush animal toys, toy spyglasses,
`
`chess set, toy casinos, toy guns, toy water guns, ball dart game, bubble making wand and solution sets, table tennis tables,
`
`rackets and balls, toy cars, toy computers, noise making animal toys, battery-powered computer game with LCD screen
`
`which features animation and sound eflects comguter games;” in International Class 028;
`
`“Lighters for smokers,” in International Class 034. 37 C.F.R. Section 2.7l(a); TMEP sections 1402.01 and 1402.03 et seq.
`
`Ill
`
`Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or
`
`broadening the scope of the goods is not permitted. 37 C.F.R. §2.7l(a); TMEP §l402.06. Therefore, applicant may not
`
`amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
`
`Additionally note that, depending on the decision of the identification of goods the classification of the goods may change.
`
`2. REQ QUIREMENTS FOR COMBINED APPLICATION:
`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 fe_e for each international class of goods and/or services not covered by the fee
`
`already paid; 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, 2.7l(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and l403.02(c).
`
`3.
`
`INSUFFICIENT FEE:
`
`Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to
`
`cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at
`
`least 18 international classes, however applicant paid the fee for only lclass.
`
`Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the
`
`required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
`
`4. SPECIMENS-UNACCEPTABLE FOR EVERY CLASS OF GOODS EXCEPT CLASS 11:
`
`This application does not include a specimen for any of the identified classes of goods, with the exception of Class 11. A
`
`specimen showing use of the mark in commerce for each class of goods 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 commerce for the goods
`
`listed in the application) for each class of goods 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 an affidavit or signed
`
`declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.56(a); TMEP §§904.01 et seq. and 904.09.
`
`Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the
`
`mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
`
`The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
`
`

`
`The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both,
`
`under 18 U.S.C. §l00l, and that such willful false statements and the like may jeopardize the Validity of the application
`
`or document or any registration resulting there from, 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)
`
`If the applicant cannot comply with the requirement for specimens for the Section 1(a) basis asserted, the applicant may
`
`substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et
`sea.
`
`In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
`
`5. TRANSLATION AND SIGNIFICANCE OF THE MARK:
`
`The applicant must submit a translation of the non—English wording in the mark. 37 C.F.R. Section 2.6l(b); TMEP section
`809.
`
`The applicant may adopt the following English translation, if accurate:
`
`The English translation of INNOVAGE is “A.”
`
`Also, the applicant must indicate whether INNOVAGE has any significance in the relevant trade, any geographical
`
`significance or any meaning in a foreign language. 37 C.F.R. Section 2.6l(b). If the mark has no significance, the
`
`statement may be in the following form:
`
`

`
`The wording “INNOVAGE” has no meaning other than trademark significance.
`
`Darryl M. Spruill
`
`Trademark Attorney
`
`Law Office 112
`
`(571) 272-9418 (office)
`
`(571)273-9418 (fax)
`
`darryl.spruill @ uspto . gov
`
`/Darryl M. Spruill/
`
`HOW TO RESPOND TO THIS OFFICE ACTION:
`
`°
`
`°
`
`ONLINE RESPONSE: You may respond formally using the Office’s Trademark Electronic Application
`
`System (TEAS) Response to Office Action form (Visit http://www.uspto.gov/teas/indeX.html and follow the
`
`instructions, but if the Office Action has been issued Via email, you must wait 72 hours after receipt of the
`
`Office Action to respond Via TEAS).
`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 in your
`
`response.
`
`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/extemal/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.
`
`The applicant is directed to the Office’s
`Ill Please note that the recommended recitation of serVices/identification of goods is not exhaustive.
`searchable
`database
`of
`the Manual
`of Acceptable
`Identifications
`of Goods
`and
`Services.
`The
`address
`for
`this
`is:
`http://www.uspto.gov/web/officesltacldoclgsmanuall.