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  76/121711

 

This letter responds to the applicant’s Request for Reconsideration and Amendment of Alleged Use filed on November 4, 2002.

 

In response to a FINAL refusal under Section 2(e)(1) of the Trademark Act, the applicant filed an amendment to allege use and a request for reconsideration amending the application to seek registration on the Supplemental Register.  In its Request for Reconsideration the applicant also amended its identification of goods. 

 

Before the examining attorney can fully consider the applicant’s request to amend the application to seek registration on the Supplemental Register, the applicant must address the following issues with regard to the amendment to allege use filed on November 4, 2002.

 

The refusal under Section 2(e)(1) of the Trademark Act and the requirement that the applicant amend its identification of goods are CONTINUED and MAINTAINED.

 

Amendment to Allege Use - Specimen Unacceptable

 

The specimen does not show use of the mark for any goods identified in the application- “component parts for non-metal windows, doors and skylights, namely fiberglass material enhanced with carbon technology.”[1]  The specimen submitted appears to show use of the mark in relation to steel doors. The applicant has applied to register the mark CARBONITE for non-metal component parts for doors not the doors themselves.  The applicant must submit a specimen showing use of the mark for the goods/services specified in the application.  37 C.F.R. §§2.56 and 2.76(b)(2); TMEP §1104.09(e). 

 

Moreover, the specimen is unacceptable as evidence of actual trademark use because it appears to be an advertising brochure.  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 2.76(b)(2).  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the applicant used the substitute specimen in commerce prior to filing the amendment to allege use.  37 C.F.R. §2.59(b)(1).

 

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 1104.09(d).

 

The statement supporting use of the substitute specimen must read as follows: 

 

The applicant used the substitute specimen in commerce prior to filing the amendment to allege use.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(1). 

 

Final Refusal Under 2(e)(1) Maintained

 

With regard to the refusal under Section 2(e)(1), the examining attorney has again considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons set forth in the final Office action of June 1, 2002, as well as for the reasons below, the final refusal under Section 2(e)(1) is MAINTAINED.

 

As the attached evidence taken from the examining attorney’s search of the NEXISÒ computer search database, as well as the Internet, CARBONITE refers to a particular type of fiberglass material used to make various non-metal objects from airplanes, to speaker components, to bicycle helmets.  As indicated in prior Office actions, it is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b).  If the applicant’s component parts for doors are made from or contain CARBONITE, than the term is merely descriptive of the goods and is unregistrable on the Principal Register.

 

Requirement to Amend the Identification of Goods Continued

 

The proposed amendment of the identification is unacceptable because the wording designates goods that are not within the scope of the identification that was set forth in the application at the time of filing.  The applicant originally applied to register the mark for component parts for doors and not the doors themselves.  While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.

 

As indicated in the Office action dated June 1, 2002, the applicant may adopt the following identification of goods in International Class 19, if accurate:  Component parts for non-metal windows, doors and skylights made of fiberglass material enhanced with carbon technology, namely, identify each part by common commercial name, e.g. frames, rails, surface panels for doors, etc.].

 

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

 

 

Julie A. Watson

Trademark Examining Attorney

Law Office 104

(703) 308-9104 ex. 132

 

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

 

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.