UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/069166
APPLICANT: Calsonic Kansei Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: CALSONIC KANSEI
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CORRESPONDENT’S REFERENCE/DOCKET NO: 13700-8036
CORRESPONDENT EMAIL ADDRESS: |
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 76/069166
This letter responds to the applicant’s recent Statement of Use. Following consideration of the submission, the examining attorney concludes as follows.
The Examining Attorney refuses registration because the proposed mark does not function as a trademark. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127. The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source. In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987). TMEP §§1202 et seq. Please note that the proposed mark does not function as a trademark because the specimen submitted with the statement of use is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source.
The specimen is unacceptable as evidence of actual trademark use because it fails to properly function as a catalog. The specimen submitted does not show proper trademark use because the mark as it appears in the catalog is not shown in close proximity to a picture of the goods, nor does it include the necessary ordering information. A catalog or similar specimen is only acceptable if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.). Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992); In re MediaShare Corporation, 43 USPQ2d 1304 (TTAB 1997); TMEP §904.06(a).
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).
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).
Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark.
The stated refusal refers to Classes 7 and 9 only and does not bar registration in the other classes. Please note, however, that failure to respond to a refusal that pertains to fewer than all classes in an application will result in abandonment of the combined application in its entirety. TMEP §1403.05.
The photos of the class 11 blowers and class 12 immobilizers are acceptable as specimens for those goods.
Please note, if, as discussed with applicant’s counsel, the chip and blower are used as part of class 7 or 9 goods, then the applicant must submit a statement to this regard and additional copies of the photographic specimens.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
My Law Office will move on October 27, 2004. To reach me by phone after that date call (571) 272-9436.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9113.
John T. Lincoski /JTL/
Trademark Attorney
Law Office 113
(703)308-9113 ext. 286
John.Lincoski@USPTO.GOV
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.