UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/002919 FORTE

 

The assigned trademark examining attorney has reviewed the amendment to allege use filed on February 19, 2004, and has determined the following.

Specimens Are NOT Acceptable

 

The shipping label submitted by the applicant is not acceptable as a specimen of use because it does not show proper trademark usage of the proposed mark.  See TMEP § 904.04(1) for more information regarding shipping labels as acceptable specimens of use.  In this instance, the proposed mark is displayed in the same font as the address and the shipping material information, and appears within a group of words as “UNITED CITRUS FORTE(TM) PI 12.5”W” PLN ROLLSTOCK.”  The proposed mark is not displayed in such a way that would be perceived as an indicator of source for packaging materials. 

The other specimen submitted by the applicant is also unacceptable as evidence of actual trademark use because it shows use of the proposed mark on advertising materials for the goods.  Materials such as invoices, announcements, order forms, bills of lading, leaflets, brochures, printed advertising material, catalogs, catalog sheets, circulars, publicity releases, and the like, are not acceptable specimens to show use on goods. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).  In this instance, it appears that this specimen of use is a leaflet used to advertise the goods.  Thus, the applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §§2.56 and 2.88(b)(2).  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §2.59(b); TMEP §§904.09 and 1109.09(b).

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b). 

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).  See attached document. 

 

Response Guidelines

 

Please note: If the applicant submits a response via electronically, an electronic signature is required.  An applicant, registrant or attorney may sign an electronic communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an electronic communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

NOTICE:  New Fee Schedule

 

Effective January 1, 2003, the fee for filing an application for trademark registration was increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

Tel:  (703) 308-9105 Ext. 261

Fax:  (703) 746-8105

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

Serial No.    76002919

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.

 

 

DECLARATION

 

 

 

The undersigned being hereby 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 this document, declares that he/she is properly authorized to execute this document on behalf of the Owner; and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

 

 

 

 

 

_____________________________________                                                _____________________

Signature                                                                                                 Date                                                                                               

 

        

 _____________________________________             

Signatory's Name

 

 

______________________________________

Signatory's Position