UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/087205
APPLICANT: HSM ARGENTINA S.A.
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CORRESPONDENT ADDRESS: THOMAS D DRESCHER SQUIRE SANDERS & DEMPSEY LLP ONE MARITIME PLAZA SUITE 300 SAN FRANCISCO, CALIFORNIA 94111 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: HSM
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CORRESPONDENT’S REFERENCE/DOCKET NO: 52071.3
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 76/087205
This letter responds to the applicant’s communication filed on December 3, 2003.
The specimens of record are acceptable to evidence use of the mark in connection with the Class 35, 38, 41 and 42 services. Class 36 has been deleted from the application, at the applicant’s request.
In the prior Office action, a requirement was made for the submission of a substitute specimen of use of the mark in connection with Class 16 printed matter. Advertisements for such printed matter, on the HSM website, are not acceptable specimens to show use of a mark on goods. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other advertising material generally are not acceptable specimens of use of a mark on goods. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).
The applicant must submit a specimen showing the mark as it is used in commerce on the Class 16 goods identified in the notice of allowance. 37 C.F.R. §§2.56 and 2.88(b)(2). This requirement is maintained and made FINAL.
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).
The following is a properly worded declaration under 37 C.F.R. §2.20. At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).
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. Applicant is the owner of the mark sought to be registered.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this amendment to the statement of use filed January 14, 2003, are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
The registration refusal 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 in connection with the Class 16 goods identified in the notice of allowance. TMEP §§904.11 and 1301.02 et seq.
/LGKovalsky/
Laura Gorman Kovalsky
Trademark Attorney
703/308-9110, x147
(for FORMAL responses only)
(for INFORMAL responses only)
The United States Patent and Trademark Office issued the Third Edition of the Trademark Manual of Examining Procedure (TMEP), January, 2002, available at www.gov.uspto.report/go/tmep. References to the TMEP correspond to the Third Edition.
CHANGE OF CORRESPONDENCE ADDRESS
Applicants may now file changes of correspondence address via a new form on TEAS. Address changes may be performed on up to 20 cases at a time. The Trademark Office strongly encourages applicants to use this time-saving form which is available online at:
<http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm>
FEE INCREASE EFFECTIVE JANUARY 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be 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 for classes added on or after January 1, 2003.
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.