| To: | KING KOIL LICENSING COMPANY, INC. (mcarrillo@ngelaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 76118279 - TURN-FREE DESIGN - 50000268-7 F |
| Sent: | 11/3/03 11:41:27 AM |
| Sent As: | ECom103 |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/118279
APPLICANT: KING KOIL LICENSING COMPANY, INC.
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CORRESPONDENT ADDRESS: Michael A. Carrillo Neal, Gerber & Eisenberg LLP Suite 2200 2 North LaSalle Street Chicago IL 60602 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
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MARK: TURN-FREE DESIGN
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CORRESPONDENT’S REFERENCE/DOCKET NO: 50000268-7 F
CORRESPONDENT EMAIL ADDRESS: mcarrillo@ngelaw.com |
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 76/118279
Applicant is requesting reconsideration of a final refusal dated April 30, 2003.
After careful consideration of the law and facts of the case, the examining attorney must deny the request for reconsideration and adhere to the final action as written since no new facts or reasons have been presented that are significant and compelling with regard to the point at issue.
Specifically, the new specimen, while in the acceptable form of a label, does not show the mark. The mark appears on the drawing page as TURN-FREE DESIGN whereas it appears on the specimens as only TURN-FREE. The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. Section 2.72(b); TMEP section 807.14(a).
Additionally, even if they were acceptable, the new specimens are not accompanied by a statement that they were “in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use” and supported by a declaration, as the examining attorney indicated was required. The only exception to this rule is when a whole new statement of use is filed prior to the expiration of the time allowed to the applicant for filing a statement of use. Since applicant’s second extension of time request was rejected, the date by which the applicant was required to file a statement of use was June 18, 2003, six months from the first extension request. The substitute statement of use, however, was filed July 1, 2003.
Accordingly, applicant’s request for reconsideration is denied. The time for appeal runs from the date the final action was mailed, and has therefore expired. Consequently, the case stands abandoned. 37 C.F.R. Section 2.64(b); TMEP Section 715.03(c).
/James T. Griffin/
Examining Attorney, Law Office 103
703-308-9103, ext. 126
jim.griffin@uspto.gov
(unofficial communications only)