UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/122148
APPLICANT: Olson, Christine
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MRS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 20370
CORRESPONDENT EMAIL ADDRESS: |
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 76/122148
The assigned examining attorney has reviewed the statement of use filed on 9/14/04 and has determined the following.
The applicant has listed the applicant’s new name in the SOU; however, an appropriate name change document has not been recorded in the Assignment Services Division of the Office.
Please note that applicant must make a proper request that the registration certificate issue in the new name by the time the application is being prepared for issuance of the registration certificate. If a proper request is not made by that time, the registration will issue in the name of the owner of record. 37 C.F.R. §3.85; TMEP §502.01. If applicant has filed a request to record the name change document with the Assignment Services Division but the name change has not yet been recorded, the written request must include a statement that the document has been filed for recordation.
See Exam Guide 01-03, section V, regarding the situations in which the records of the Trademark Operation are automatically updated after an assignment, merger or name change is recorded with the Assignment Services Division.
The applicant has submitted two specimens. The specimens are unacceptable for the following reasons.
Specimen #1 with the caduceus symbol.
The drawing displays the mark as MRS. However, this differs from the display of the mark on the specimen, where it appears as the letters M R S separated by a design element. 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. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).
Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing. 37 C.F.R. §2.51; TMEP §807.14. 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) and 2.72(b); TMEP §904.09.
Specimen # 2 the invoice
The specimen is unacceptable as evidence of actual trademark use because it does not show how the mark is used on the goods themselves. Material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods. These materials include all papers whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties and business stationery. See In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); In re Bright of America, supra; Varian Associates v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958). As to display of trademarks on company uniforms, see In re McDonald’s Corp., 199 USPQ 702 (TTAB 1978); Toro Manufacturing Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969). The applicant must submit a specimen showing the mark as used in commerce. 37 C.F.R. §§2.56 and 2.88(b)(2) TMEP section 904.05.. Even if invoices were acceptable, this specimen would be unacceptable because it makes reference to CD’s and not printed forms. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging. TMEP §904.04 et seq.
The statement supporting use of the substitute specimen must read as follows:
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.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b).
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
Priscilla Milton
Examining Attorney
Law Office 110
(571) 272-9199
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.