Offc Action Outgoing

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  76/103153

 

The assigned examining attorney has reviewed the statement of use filed on January 8, 2004, and has determined the following.

 

 

DOES NOT FUNCTION AS A TRADEMARK:

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.

 

The specimen of record, along with any other relevant evidence submitted with the application, is reviewed and analyzed in order to determine whether a term is being properly used as a trademark.  In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of North America, 46 USPQ2d 1455 (TTAB 1998).  Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as marks, even if they may have been adopted with the intent to do so.  A designation cannot be registered unless ordinary purchasers would regard it as a source-indicator for the goods.  In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §§1202 et seq.

 

In this case, the proposed mark (“IGIS”) is buried in text.  That is, the proposed mark only appears in the second paragraph of the applicant’s web page and so would not be perceived as a trademark by prospective consumers.  The fact that the wording “TM” is placed beside the proposed mark is not dispositive.

 

This refusal will be withdrawn if applicant submits both (1) a substitute specimen showing use as a trademark, and (2) a statement that “the substitute specimen was in use in commerce prior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,” verified with a notarized affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(2); TMEP §§904.09 and 1109.09(b).

 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 

INFORMALITIES:

 

            If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

 

SPECIMEN IS UNACCEPTABLE:

 

The specimen is unacceptable as evidence of actual trademark use because it is advertising.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  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.  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).

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/ROBERT L. LORENZO/

Robert L. Lorenzo

Trademark Attorney

Law Office 111

(703) 308-9111 x 117

Robert.Lorenzo@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 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.

 

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.