UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/106796
APPLICANT: ROGER CLEVELAND GOLF COMPANY, INC.
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CORRESPONDENT ADDRESS: ROGER W PARKHURST PARKHURST & WENDEL LLP 1421 PRINCE ST STE 210 ALEXANDRIA VA 22314
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom106@uspto.gov
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MARK: GUNMETAL
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CORRESPONDENT’S REFERENCE/DOCKET NO: CLEV:416
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 76/106796
This letter responds to the applicant's communication filed on September 9, 2002. Please note, the Office has reassigned this application to the undersigned examining attorney.
The amendment to the Supplemental Register is acceptable. However, upon further review of this application, the examining attorney must reinstate in the specimen refusal issued in the first Office Action.
The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark on the goods or their packaging. Based on the evidence of record, the specimens appear to be merely advertising material for the goods. 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 has argued that the specimens are point of sale displays in the nature of a type of instruction manual which assists a buyer at the point-of-sale in selecting the particular golf club based upon the different metals and finishes. However, displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices. These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods. The display must be related to the sale of the goods so that an association of the two is inevitable. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein. See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980). Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).
Folders and brochures that describe goods and their characteristics or serve as advertising literature are not per se “displays.” In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990). In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation. See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982). See TMEP §904.06(a) regarding the criteria by which a catalog or other advertising may constitute a display associated with the goods. Therefore, the applicant must submit a clear photograph showing how the specimen is displayed. 37 C.F.R. §2.61(b). See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); TMEP §§904 and 904.06.
Alternatively, the applicant may submit a substitute specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. 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 at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09. The examining attorney has enclosed the following example of a substitute specimen declaration for the applicant’s use in preparing their own declaration.
SUBSTITUTE SPECIMEN DECLARATION
Serial No.
Mark:
Applicant:
The substitute specimen was in use in interstate commerce at least as early as the filing date of the application.
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 application 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.
_____________________________
(Signature)
_____________________________
(Date)
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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
/Leslie L. Richards/
Trademark Examining Attorney
Law Office 106
703-308-9106 ext. 172
703-746-8106 fax
ecom106@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.