UNITED STATES PATENT AND TRADEMARK OFFICE
REGISTRATION NO: 2,669,839
REGISTRANT: Advanced Digital Systems, Inc.
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January 23, 2009
*2669839* |
CORRESPONDENT ADDRESS: Holly A. Coldiron Hutchison Law Group PLLC Suite 400 5410 Trinity Road Raleigh NC 27607 |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MI-CO
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CORRESPONDENT’S REFERENCE/DOCKET NO: ADSI.21002
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Registration date, registration number, mark and registrant's name. 2. Date of this Office Action. 3. Examiner's name and Post Registration Division. 4. Your telephone number and e-mail address.
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Registration Number 2,669,839
The Sections 8 & 15 Combined Affidavit was received on January 9, 2009. The Section 15 portion of the combined affidavit is acknowledged. However, the Section 8 portion is not accepted for the reason(s) set forth below.
The owner must submit (1) a substitute specimen showing current use in commerce of the registered mark on or in connection with the goods in International Class 9 in the registration, and (2) a statement that the substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8. This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.161(g)(1); TMEP §1604.12(c).
The current specimen comprises advertising and/or marketing materials which are unacceptable to show trademark use for goods because they do not show use of the registered mark on the goods or on packaging for the goods. TMEP §904.05.
The specimen is not acceptable to show trademark use in a display associated with the goods because, although identified as a catalog page or webpage, it does not show the mark in close proximity to a picture of the goods. Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.06(a)-(b).
A printed or web catalog, web page, or similar specimen is acceptable to show trademark use as a display associated with the goods only 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.) or a visible web link to order the goods. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.06(a) and (b).
Examples of specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq.
The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:
The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 6-year Section 8, that is, between the 5th and 6th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062.
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 statement may jeopardize the validity of this document, declares that s/he 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.
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Signature of Authorized Person
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Type or Print Name
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Date
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the issuance date of this Office action. The owner must respond to all inquiries set forth in this Office action to avoid cancellation of International Class 9. 37 C.F.R. §2.163(b)-(c); TMEP §1604.16.
DEFICIENCY SURCHARGE REQUIRED: The owner must submit a $100 deficiency surcharge with its response to this Office action. 37 C.F.R. §§2.6 and 2.164(a)(1).
C. R. Hill
Ms. Catherine R. Hill
Affidavit/Renewal Examiner
Post Registration Division
Office of Trademark Services
(571) 272-9530
Fax (571) 273-9530
How to respond to this Office Action:
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the registration number, the words 'Post Registration' and the examiner'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 EXAMINER.