UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/018685
APPLICANT: Urecoats International, Inc.
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CORRESPONDENT ADDRESS: DANIEL S. POLLEY MALIN, HALEY & DIMAGGIO, P.A. 1936 SOUTH ANDREWS AVENUE FORT LAUDERDALE, FL 33316
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: RSM
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CORRESPONDENT’S REFERENCE/DOCKET NO: 9893.6709
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/018685
This letter responds to the applicant’s communication filed on November 6, 2003.
The requirement for specimens which conform to the drawing of record is continued and made Final.
The drawing displays the mark as RSM. However, this differs from the display of the mark on the specimen, where it appears as UrecoatsRSM-100. The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).
Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing. 37 C.F.R. §2.51; TMEP §807.14. 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) and 2.72(b); TMEP §904.09.
The specimen more specifically is unacceptable to support RSM because there is no spatial separation or differentiation between UrecoatsRSM-100. In fact, applicant uses the TM symbol after 100 thus applicant itself supports the fact that it considers the whole to be the trademark depicted in the specimens of record. A viewer of the specimens can not be reasonably expected to recognize RSM in and of itself as the trademark depicted in the specimens of record and the requirement for supporting specimens is continued and made Final.
Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700. If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
/Edward Nelson/
Examining Attorney
Law Office 106
(703) 308-9106 ext.197
(703)746-8106 (fax no.)
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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.